UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`PETITIONER
`
`v.
`
`TACTION TECHNOLOGY, INC.
`PATENT OWNER
`____________
`
`Case No. IPR2022-00059
`U.S. Patent No. 10,659,885
`____________
`
`DECLARATION OF DR. BLAKE HANNAFORD
`
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`TABLE OF CONTENTS
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`Introduction ....................................................................................................... 1
`I.
`A. Materials Reviewed ................................................................................... 2
`B. Background and Qualifications ................................................................. 5
`II. Legal Framework .............................................................................................. 9
`III. Opinion ........................................................................................................... 16
`A. Overview of the ’885 Patent ................................................................... 16
`B. Background of the Technology ............................................................... 17
`1. Linear Actuators ................................................................................. 17
`2. Damping mechanisms ........................................................................ 23
`3. Designing an Actuator Used to Provide Haptics in Mobile Devices . 30
`C. Level of a Person Having Ordinary Skill in the Art ............................... 34
`D. Claim Construction ................................................................................. 35
`E. Ground 1: Obvious to Combine Miyazaki, Park494, and Kajiwara ....... 36
`1. Overview of the Prior Art .................................................................. 36
`2. Opinions Regarding Claims 1, 17, and 20 ......................................... 40
`3. Opinions Regarding Claim 2 (“said housing is generally cuboid in
`shape”) ............................................................................................... 74
`4. Opinions Regarding Claims 3 and 18 (“the cuboid-shaped housing has
`portion, and the thickness is less than the width”) ............................. 75
`5. Opinions Regarding Claim 4 (“the cuboid-shaped housing has a
`and the thickness is less than a width”) ............................................. 78
`6. Opinions Regarding Claim 5 (“at least one magnetic flux guide
` ............................................................................................................ 79
`7. Opinions Regarding Claim 6 (“said housing comprises at least one
`magnetic flux guide comprising a ferromagnetic material”) ............. 80
`
`length dimension in a direction of motion of the moving portion, and a
`thickness dimension perpendicular to the length dimension, wherein
`the thickness dimension is less than one-third of the length dimension,
`
`a thickness less than one-third of a width, where the thickness and
`width are both orthogonal to a direction of motion of the moving
`
`comprises a portion of said housing and is coupled to at least a coil”)
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`a motion axis of the moving portion than it is in directions orthogonal
`
`to motion transverse to a plane of the moving portion than it is to
`linear motion in the plane of and along a motion axis of the moving
`
`producing audio frequency vibrations in response to electrical signals
`
`8. Opinions Regarding Claims 9 and 19 (“each of said plurality of coils
`is an elongated oval with substantially flat sides”) ............................ 81
`9. Opinions Regarding Claim 10 (“each of said flexures is thinner along
`to the motion axis of the moving portion”) ........................................ 83
`10. Opinions Regarding Claim 11 (“each of said flexures is more resistant
`portion”) ............................................................................................. 83
`11. Opinions Regarding Claim 12 (“a long axis of each of the plurality of
`flexures is substantially in a plane of the moving portion”) .............. 85
`12. Opinions Regarding Claim 13 (“said apparatus is capable of
`applied to the plurality of coils”) ....................................................... 86
`13. Opinions Regarding Claim 15 (“said plurality of flexures are not
`integrally formed with said moving portion or said housing”) .......... 86
`14. Opinions Regarding Claim 16 (“said moving portion moves relative to
`than a length dimension and a width dimension”) ............................. 88
`15. Opinions Regarding Claim 20 ........................................................... 88
`F. Ground 2: Obvious to Combine Miyazaki, Park494, and Park728 ........ 95
`1. Overview of the Prior Art .................................................................. 96
`2. Opinion Regarding Claims [1(g)] and [17(g)] (“wherein the ferrofluid
`conductive coils”) .............................................................................. 97
`3. Opinion Regarding Claim [20(g)] (“wherein the ferrofluid reduces the
`coil”) ................................................................................................ 104
`IV. Conclusion .................................................................................................... 107
`
`said plurality of coils along a plane that is orthogonal to a thickness
`dimension of the housing, wherein said thickness dimension is smaller
`
`reduces at least a mechanical resonance within the frequency range of
`40-200 Hz in response to electrical signals applied to the plurality of
`
`Q-Factor of the response of the apparatus over at least a portion of the
`frequency range of 40-200 Hz in response to signals applied to the
`
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`I, Blake Hannaford, declare the following:
`
`I.
`
`INTRODUCTION
`
`1. My name is Blake Hannaford and I am over 21 years of age and
`
`otherwise competent to make this Declaration. I make this Declaration based on facts
`
`and matters within my own knowledge and on information provided to me by others,
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`and, if called as a witness, I could and would competently testify to the matters set
`
`forth herein.
`
`2.
`
`I have been retained as a technical expert witness in this matter by
`
`Counsel for the Petitioner, Apple, Inc., to provide my independent opinions on
`
`certain issues requested by counsel for Petitioner relating to the accompanying
`
`petitions for Inter Partes Review (“IPR”) of U.S. Patent No. 10,659,885 (the “’885
`
`Patent”). I understand that the Challenged Claims in Petitioner’s IPR Petitions are
`
`1-20 (the “Challenged Claims”) of the ’885 Patent. My opinions are limited to those
`
`Challenged Claims. I have been informed that Taction Technology, Inc. (“Patent
`
`Owner”) is the purported owner of the ’885 patent. I note that I have no financial
`
`interest in Patent Owner, or the Petitioner, Apple Inc. and I have no other interest in
`
`the outcome of this matter.
`
`3.
`
`I am being compensated for my time spent in connection with this
`
`matter. My compensation in this matter is not based on the substance of my opinions
`
`or on the outcome of this matter.
`
`
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`A. Materials Reviewed
`4.
`As part of my work and in forming my opinions in connection with this
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`proceeding, I have reviewed the following materials, each of which I believe experts
`
`in my field would reasonably rely upon in forming opinions regarding the subject
`
`matter of this proceeding:
`
`• Exhibit 1001 – U.S. Patent No. 10,659,885 (the “’885 Patent”);
`
`• Exhibit 1002 – File History of the ’885 Patent (the “’885 File History”);
`
`• Exhibit 1004 – Japanese PCT Application No. WO2011013570 to
`Miyazaki et al. (“Miyazaki”);
`
`• Exhibit 1005 – U.S. Patent No. 8,766,494 to Park (“Park494”);
`
`• Exhibit 1006 – U.S. Patent Publication No. 2009/0267423 to Kajiwara
`(“Kajiwara”);
`
`• Exhibit 1007 – U.S. Patent No. 8,461,728 to Park et al. (“Park728”);
`
`• Exhibit 1008 –U.S. Patent Publication No. 2012/0187780 to Bang et al.
`(“Bang”);
`
`• Exhibit 1009 – U.S. Patent No. 8,456,042 to Dong et al. (“Dong”);
`
`• Exhibit 1010 – U.S. Patent No. 9,048,718 to Zhang (“Zhang”);
`
`• Exhibit 1011 – U.S. Patent Publication No. 2008/0001484 to Fuller et al.
`(“Fuller”);
`
`• Exhibit 1012 – U.S. Patent No. 2013/0264973 to Garg (“Garg”);
`
`• Exhibit 1013 – Gowda et al., Implement haptics in touch-based user
`interfaces,
`EDN
`(June
`11,
`2014),
`at
`available
`https://www.edn.com/implement-haptics-in-touch-based-user-interfaces/
`(“Gowda”);
`
`• Exhibit 1014 – U.S. Patent No. 6,466,682 to An (“An”);
`
`
`
`2
`
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`• Exhibit 1015 – U.S. Patent No. 8,619,051 to Lacroix et al. (“Lacroix”);
`
`• Exhibit 1016 – U.S. Patent No. 9,489,047 to Jiang et al. (“Jiang”);
`
`• Exhibit 1017 – U.S. Patent Publication No. 2012/0229264 to Company
`Bosch et al. (“Bosch”);
`
`• Exhibit 1018 – U.S. Patent No. 8,593,269 to Grant et al. (“Grant”);
`
`• Exhibit 1019 – Reese, University Physics, Brooks/Cole Publishing
`Company (2000) (“University Physics”);
`
`• Exhibit 1020 – U.S. Patent No. 6,704,001 to Schena et al. (“Schena”);
`
`• Exhibit 1021 – U.S. Patent No. 8,795,190 to O’Brien (“O’Brien”);
`
`• Exhibit 1022 – McGraw-Hill Dictionary of Scientific & Technical
`Terms, 6E, Copyright © 2003 by The McGraw-Hill Companies, Inc.
`(“Dictionary of Scientific & Technical Terms”);
`
`• Exhibit 1023 – Electrical Engineering Dictionary, Boca Raton: CRC Press
`LLC (2000) (“Electrical Engineering Dictionary”);
`
`• Exhibit 1024 – Kuphaldt, T., Lessons In Electric Circuitry, Volume II –
`AC, 6E (July 25, 2007) (“Kuphaldt”);
`
`• Exhibit 1025 – U.S. Patent No. 7,999,421 to Kim et al. (“Kim ’421”);
`
`• Exhibit 1026 – Raj et al., A Review of Damping Applications of
`Ferrofluids, IEEE Transactions on Magnetics, Vol. Mag-16, No. 2 (March
`1980) (“Raj”);
`
`• Exhibit 1027 – Rinaldi et al., Magnetic fluid rheology and flows, Current
`Opinion in Colloid & Interface Science 10 (2005) 141– 157 (Oct. 2005)
`(“Rinaldi”);
`
`• Exhibit 1028 – U.S. Patent No. 8,097,988 to Kim et al. (“Kim ’988”);
`
`• Exhibit 1029 – U.S. Patent Publication No. 2011/0181131 to Pu (“Pu”);
`
`• Exhibit 1030 – Browaeys et al., Surface Waves and Wave Resistance in
`Magnetic Fluids, Brazilian Journal of Physics, vol. 31, no. 3 (September
`2000) (“Browaeys”);
`
`
`
`3
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`• Exhibit 1031 – Sprenger et al., Thermodiffusion in ferrofluids regarding
`International Meeting
`on
`10th
`thermomagnetic
`convection,
`Thermodiffusion, C.R. Mecanique 341 (2013) 429-437 (“Sprenger”);
`
`• Exhibit 1032 – U.S. Patent Application Publication No. 2007/0189577 to
`Tsuda et al. (“Tsuda”);
`
`• Exhibit 1033 – U.S. Patent No. 5,200,866 to Fruge et al. (“Fruge”);
`
`• Exhibit 1034 – U.S. Patent No. 6,086,780 to Hong et al. (“Hong”);
`
`• Exhibit 1035 – U.S. Patent No. 6,850,388 to Knotts (“Knotts”);
`
`• Exhibit 1036 – Trafton, Anne, Good Vibrations, TechTalk, Vol. 53 No. 17
`(March 4, 2009) (“Trafton”);
`
`• Exhibit 1037 – Yim et al., The Mobile Phone’s Optimal Vibration
`Frequency in Mobile Environments, N. Aykin (Ed.): Usability and
`Internationalization, Part I, HCII 2007, LNCS 4559, pp. 646–652 (2007)
`(“Yim”);
`
`• Exhibit 1038 – Jones et al., Tactile Displays: Guidance for Their Design
`and Application, Human Factors The Journal of the Human Factors and
`Ergonomics Society (March 2008) (“Jones”);
`
`• Exhibit 1039 – Baek et al., Have you ever missed a call while moving?:
`The Optimal Vibration Frequency for Perception in Mobile Environments,
`Proceedings of the 6th WSEAS International Conference on Applied
`Informatics and Communications, Elounda, Greece, August 18-20, 2006
`(pp241-245) (“Baek”);
`
`• Exhibit 1040 – U.S. Patent No. 6,792,122 to Okada et al. (“Okada”);
`
`• Exhibit 1041 – Alvi, A., JIS G 3141 Commercial Col Rolled SPCC Steels,
`Material
`Grades,
`(July
`5,
`2012)
`available
`at
`https://www.materialgrades.com/jis-g-3141-commercial-cold-rolled-
`spcc-steels-109.html (“Alvi”);
`
`• Exhibit 1042 – U.S. Patent No. 7,280,021 to Nagasaki (“Nagasaki”);
`
`
`
`4
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`• Exhibit 1043 – Oxford Dictionary of Mechanical Engineering, Oxford
`University Press
`(2013)
`(“Oxford Dictionary of Mechanical
`Engineering”).
`
`
`
`B.
`5.
`
`Background and Qualifications
`I have summarized in this section my educational background, career
`
`history, and other qualifications relevant to this matter. I have also included a current
`
`version of my curriculum vitae as Ex. 1044.
`
`6.
`
`I received a B.S. in Engineering and Applied Science from Yale
`
`University in 1977. I received an M.S. in Electrical Engineering and Computer
`
`Science from the University of California, Berkeley in 1982. I received a Ph.D. in
`
`Electrical Engineering and Computer Science from the University of California,
`
`Berkeley in 1985.
`
`7.
`
`Since 1986, I have been involved in the research and design of devices
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`that improve the interaction between humans and computer systems including
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`robotics and control devices. While a Supervisor at the Jet Propulsion Laboratory at
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`Caltech, I gained a deep understanding and developed expertise in Man-Machine
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`Systems and human factors engineering in computer-based systems. Since that time,
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`I have expanded my involvement with human computer interfaces to include
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`research, teaching, and design in the areas of human-computer interfaces and
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`embedded computing.
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`
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`I have many highly cited publications in the area of haptic interfaces
`
`8.
`
`and their use by human users. For example, my co-authored paper “Hannaford,
`
`Blake, and Jee-Hwan Ryu. "Time-domain passivity control of haptic
`
`interfaces." IEEE transactions on Robotics and Automation 18, no. 1 (2002): 1-10.
`
`has 871 citations on Google Scholar (accessed 4-Oct-2021). Another paper
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`“Redmond, Brittany, Rachel Aina, Tejaswi Gorti, and Blake Hannaford. "Haptic
`
`characteristics of some activities of daily living." In 2010 IEEE Haptics Symposium,
`
`pp. 71-76. IEEE, 2010.” (with 28 citations) measured force and torque recordings of
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`several writing tasks with pen and pencil, opening and closing a jar, and dialing and
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`texting with a cell phone.
`
`9.
`
`The paper Rosen, Jacob, Mark MacFarlane, Christina Richards, Blake
`
`Hannaford, and Mika Sinanan. "Surgeon-tool force/torque signatures-evaluation of
`
`surgical skills in minimally invasive surgery." In Medicine meets virtual reality, pp.
`
`290-296. IOS Press, 1999. (cited 128 times) describes forces measured during
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`animal surgeries by both expert and novice surgeons during training. In Rosen,
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`Jacob, Jeffrey D. Brown, Lily Chang, Marco Barreca, Mika Sinanan, and Blake
`
`Hannaford. "The BlueDRAGON-a system for measuring the kinematics and
`
`dynamics of minimally invasive surgical tools in-vivo." In Proceedings 2002 IEEE
`
`International Conference on Robotics and Automation (Cat. No. 02CH37292), vol.
`
`2, pp. 1876-1881. IEEE, 2002. (249 citations) we describe a system for measuring
`
`
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`force and movement of surgical instruments in 6 directions simultaneously for
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`collecting data on surgical skill.
`
`10. With my student Nancy Greivell, I studied application of ferrofluids to
`
`fluid pumps, reported in Greivell, Nancy E., and Blake Hannaford. "The design of a
`
`ferrofluid magnetic pipette." IEEE transactions on biomedical engineering 44, no. 3
`
`(1997): 129-135. (51 citations).
`
`11.
`
`I am a Professor in the Department of Electrical Engineering at the
`
`University of Washington. I also hold appointments as an Adjunct Professor of
`
`Bioengineering, an Adjunct Professor of Mechanical Engineering, and an Adjunct
`
`Professor of Surgery at the University of Washington. I have been a member of the
`
`faculty at the University of Washington for approximately 27 years.
`
`12. During my teaching career, I have taught and performed research in the
`
`general areas of embedded computing, controls, robotics, human computer
`
`interfaces, and applications of these technologies, including to surgical telerobotics.
`
`I have taught over fifty course offerings at the undergraduate and graduate levels,
`
`including courses related to consumer electronics design, control systems, embedded
`
`and real-time software design, and haptic enabled systems. I have been an advisor
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`for numerous graduate research projects including sensing in mobile devices,
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`position sensors, the application of accelerometers to human carried devices, and
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`sensors for multi-finger haptics.
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`In 2014-15 I worked for Google-X as it created a new Alphabet
`
`13.
`
`company Verily. While there I worked, among other things, on haptic intefaces for
`
`surgical robots, and evaluated similar technologies from other companies.
`
`14.
`
`I have patented several haptic devices or control methods including
`
`US9,104,271B1, USRE375281E1, US5,642,469, US7,027,965B2, US6,437,770.
`
`15. Within the Department of Electrical Engineering, I have served on
`
`many committees. During 2010-2011, I was Chair of the Electrical Engineering
`
`Computing Committee. Outside of the University, in the areas of human-computer
`
`interfaces, including haptic devices, robotics, and biomedical engineering, I have
`
`served as a Chair to multiple conferences and committees and repeatedly served as
`
`an editor and guest-editor.
`
`16.
`
`I have published extensively over my career including numerous peer-
`
`reviewed and cited publications and papers. I have also contributed to books as an
`
`author and an editor. These publications are listed in my CV. I am named as an
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`inventor on at least seven U.S. patents, including multiple patents related to haptic
`
`interfaces and a pen-based input device.
`
`17. Since 2006, I have been a Fellow in the Institute of Electrical and
`
`Electronic Engineers for “contributions to haptic interfaces and telerobotic systems.”
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`Additionally, I have received awards from the University of Washington, including
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`
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`awards related to service to the department and recognition from students as a
`
`favorite professor and Outstanding Research Advisor.
`
`18. A detailed list of my other professional activities, memberships, and
`
`speaking engagements is included in my CV.
`
`II. LEGAL FRAMEWORK
`19.
`I am a technical expert and do not offer any legal opinions. However,
`
`counsel informed me about certain legal principles regarding patentability and
`
`related matters under United States patent law, which I have applied in performing
`
`my analysis and arriving at my technical opinions in this matter.
`
`20.
`
`I have been informed that in proceedings before the USPTO, claim
`
`terms are to be given the meaning they would have to a person having ordinary skill
`
`in the art (“PHOSITA”) at the time of the invention, taking into consideration the
`
`patent, its file history, and, secondarily, applicable extrinsic evidence such as
`
`dictionary definitions.
`
`21.
`
`I have been informed that a person cannot obtain a patent on an
`
`invention if the differences between the invention 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 PHOSITA. A conclusion of obviousness may be founded upon more than
`
`a single item of prior art. In determining whether prior art references render a claim
`
`obvious, counsel has informed me that courts consider the following factors: (1) the
`
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`scope and content of the prior art, (2) the differences between the prior art and the
`
`claims at issue, (3) the level of skill in the pertinent art, and (4) secondary
`
`considerations of non-obviousness. Additionally, I understand the obviousness
`
`inquiry should not be done in hindsight. Instead, the obviousness inquiry should be
`
`done through the eyes of a PHOSITA at the time of the alleged invention.
`
`22.
`
`In considering whether certain prior art renders a particular patent claim
`
`obvious, counsel has informed me that courts allow a technical expert to consider
`
`the scope and content of the prior art, including the fact that one of skill in the art
`
`would regularly look to the disclosures in patents, trade publications, journal articles,
`
`industry standards, product
`
`literature and documentation,
`
`texts describing
`
`competitive technologies, requests for comment published by standard setting
`
`organizations, and materials from industry conferences. I have been informed that
`
`for a prior art reference to be proper for use in an obviousness analysis, the reference
`
`must be “analogous art” to the claimed invention. I have been informed that a
`
`reference is analogous art to the claimed invention if: (1) the reference is from the
`
`same field of endeavor as the claimed invention (even if it addresses a different
`
`problem); or (2) the reference is reasonably pertinent to the problem faced by the
`
`inventor (even if it is not in the same field of endeavor as the claimed invention). In
`
`determining whether a reference is reasonably pertinent, one should consider the
`
`problem faced by the inventor, as reflected either explicitly or implicitly, in the
`
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`specification. I believe that all of the references I considered in forming my opinions
`
`in this IPR are well within the range of references a PHOSITA would have consulted
`
`to address the type of problems addressed by the claimed inventions of the
`
`challenged patent.
`
`23.
`
`In determining whether the subject matter of a patent claim is obvious,
`
`I understand neither the particular motivation nor the avowed purpose of the patentee
`
`controls. Instead, the important consideration is the objective reach of the claim. In
`
`other words, if the claim extends to what is obvious, then the claim is invalid. I
`
`further understand the obviousness analysis often necessitates consideration of the
`
`interrelated teachings of multiple patents, the effects of demands known to the
`
`technological community or present in the marketplace, and the background
`
`knowledge possessed by a PHOSITA. All of these issues may be considered to
`
`determine whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent.
`
`24.
`
`I have been informed that, in order to establish that a claimed invention
`
`was obvious based on a combination of prior art elements, a clear articulation of the
`
`reason(s) why a claimed invention would have been obvious must be provided.
`
`Specifically, I am informed that, under the U.S. Supreme Court’s decision in KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007), a combination of multiple items
`
`of prior art renders a patent claim obvious when there was an apparent reason for a
`
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`PHOSITA, at the time of the invention, to combine the prior art, which can include,
`
`but is not limited to, any of the following rationales: (A) combining prior art methods
`
`according to known methods to yield predictable results; (B) substituting one known
`
`element for another to obtain predictable results; (C) using a known technique to
`
`improve a similar device in the same way; (D) applying a known technique to a
`
`known device ready for improvement to yield predictable results; (E) trying a finite
`
`number of identified, predictable potential solutions, with a reasonable expectation
`
`of success; (F) identifying that known work in one field of endeavor may prompt
`
`variations of it for use in either the same field or a different one based on design
`
`incentives or other market forces if the variations are predictable to one of ordinary
`
`skill in the art; or (G) identifying an explicit teaching, suggestion, or motivation in
`
`the prior art that would have led one of ordinary skill to modify the prior art reference
`
`or to combine the prior art references to arrive at the claimed invention. I am also
`
`informed that where there is a motivation to combine, claims may be rejected as
`
`prima facie obvious provided a PHOSITA would have had a reasonable expectation
`
`of success regarding the proposed combination.
`
`25.
`
`I am informed that the existence of an explicit teaching, suggestion, or
`
`motivation to combine known elements of the prior art is a sufficient, but not a
`
`necessary, condition to a finding of obviousness. This so-called “teaching-
`
`suggestion-motivation” test is not the exclusive test and is not to be applied rigidly
`
`
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`in an obviousness analysis. In determining whether the subject matter of a patent
`
`claim is obvious, neither the particular motivation nor the avowed purpose of the
`
`patentee controls. Instead, the important consideration is the objective reach of the
`
`claim. In other words, if the claim extends to what is obvious, then the claim is
`
`invalid. I am further informed that the obviousness analysis often necessitates
`
`consideration of the interrelated teachings of multiple patents, the effects of demands
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`known to the technological community or present in the marketplace, and the
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`background knowledge possessed by a PHOSITA. All of these issues may be
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`considered to determine whether there was an apparent reason to combine the known
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`elements in the fashion claimed by the patent.
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`26.
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`I also understand that in conducting an obviousness analysis, a precise
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`teaching directed to the specific subject matter of the challenged claim need not be
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`sought out because it is appropriate to take account of the inferences and creative
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`steps that a PHOSITA would employ. I understand that the prior art considered can
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`be directed to any need or problem known in the field of endeavor at the time of the
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`invention and can provide a reason for combining the elements of the prior art in the
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`manner claimed. In other words, the prior art need not be directed towards solving
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`the same specific problem as the problem addressed by the patent. Further, the
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`individual prior art references themselves need not all be directed towards solving
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`the same problem. I have been informed that common sense is important and should
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`be considered. Common sense teaches that familiar items may have obvious uses
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`beyond their primary purposes.
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`27.
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`I also understand that a particular combination of prior art elements
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`being “obvious to try” may indicate that the combination was obvious even if no one
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`attempted the combination. If the combination was obvious to try (regardless of
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`whether it was actually tried) or leads to anticipated success, then it is likely the
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`result of ordinary skill and common sense rather than innovation. I further
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`understand that in many fields it may be that there is little discussion of obvious
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`techniques or combinations, and it often may be the case that market demand, rather
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`than scientific literature or knowledge, will drive the design of an invention. I
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`understand that an invention that is a combination of prior art must do more than
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`yield predictable results to be non-obvious.
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`28.
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`I understand that for a patent claim to be obvious, the claim must be
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`obvious to a PHOSITA at the time of the invention. I understand the factors to
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`consider in determining the level of ordinary skill in the art include: (1) educational
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`level and experience of people working in the field at the time the invention was
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`made, (2) types of problems faced in the art and solutions found to those problems,
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`and (3) sophistication of the technology in the field.
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`29.
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`I am informed that it is improper to combine references where the
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`references teach away from their combination. I am informed that a reference may
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`be said to teach away when a PHOSITA, upon reading the reference, would be
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`discouraged from following the path set out in the reference, or would be led in a
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`direction divergent from the path that was taken by the patent applicant. In general,
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`a reference will teach away if it suggests that the line of development flowing from
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`the reference’s disclosure is unlikely to be productive of the result sought by the
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`patentee. I am informed that a reference teaches away, for example, if (1) the
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`combination would produce a seemingly inoperative device, or (2) the references
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`leave the impression that the product would not have the property sought by the
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`patentee. I also am informed, however, that a reference does not teach away if it
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`merely expresses a general preference for an alternative invention but does not
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`criticize, discredit, or otherwise discourage investigation into the invention claimed.
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`30.
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`I am informed that even if a prima facie case of obviousness is
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`established, the final determination of obviousness must also consider “secondary
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`considerations” if presented. In most instances, the patentee raises these secondary
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`considerations of non-obviousness. In that context, the patentee argues an invention
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`would not have been obvious in view of these considerations, which include: (a)
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`commercial success of a product due to the merits of the claimed invention, (b) a
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`long-felt, but unsatisfied need for the invention, (c) failure of others to find the
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`solution provided by the claimed invention, (d) deliberate copying of the invention
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`by others, (e) unexpected results achieved by the invention, (f) praise of the invention
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`by others skilled in the art, (g) lack of independent simultaneous invention within a
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`comparatively short space of time, (h) teaching away from the invention in the prior
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`art.
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`31.
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`I further understand that secondary considerations evidence is only
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`relevant if the offering party establishes a connection, or nexus, between the
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`evidence and the claimed invention. The nexus cannot be based on prior art features.
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`The establishment of a nexus is a question of fact. While I understand that Patent
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`Owner has not offered any secondary considerations at this time, I will supplement
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`my opinions in the event that Patent Owner raises secondary considerations during
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`the course of this proceeding.
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`III. OPINION
`A. Overview of the ’885 Patent
`32. The ’885 Patent relates to a vibration module or tactile transducer that
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`produces vibrations for perception by touch. ’885 Patent (Ex. 1001) at Abstract,
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`1:20-21. The vibration module of
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`the
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`’885 Patent produces damped
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`electromagnetically actuated planar motion utilizing a magnetic moving mass that is
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`suspended above a coil that carries an electrical current, all of which are contained
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`within a housing. Id. at 3:51-53, 3:63-4:2.
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`33. Specifically, the moving mass of the ’885 Patent includes magnets and
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`is suspended on flexures within the frame or housing. Id. at 3:51-53, 8:16-19. An
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`electrical current carried by the coils interacts with the magnets of the moving mass,
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`causing the mass to vibrate within the housing via the flexures. Id. at 3:51-53, 8:19-
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`25. The ’885 Patent teaches that the motion of the moving mass may be damped by
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`a ferrofluid. Id. at 4:6-9, 8:38-41, 9:36-41. Due to the configuration of the vibration
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`module, the motion of the mass is planar, which results in a thin, flat vibration
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`module that can be used in devices such as headphones. Id. at 8:9-15.
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`B.
`Background of the Technology
`34. As the following background discussion suggests, the basic concepts,
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`teachings, and techniques utilized by the vibration motor described in the ’885 Patent
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`were well-known at the time of the claimed invention, which I have been instructed
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`to assume is September 24, 2014.
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`1.
`Linear Actuators
`35. The ’885 Patent desc