Application No.: 90/014,965
`
`14
`
`Docket No.: L2039.70001US10
`
`
`
`eee
`FRTS
`
`The user may “navigate” a user interface that displays one or more content modes, and in
`
`one embodiment may “select” a particular content mode by pressing the scroll wheel when the
`
`desired content modeis highlighted. /d., 12:23-29. In one embodiment, after the user has selected a
`
`particular content mode on the userinterface, “a new ‘page’ or screen on the userinterface
`
`corresponding to the selected mode”is brought up that displays to the user the “ particular
`
`functions, features or applications within that [previously-selected content] mode”so that the user
`
`mayselect a desired function, feature or application. /d., 12:32-35. Thus, according to the
`
`specification, displaying a content mode meansdisplaying some “information, such as menus,
`
`icons, etc. ... on the display screen 110” (id., 10:54-65) that represents the content mode, andis
`
`distinct from displaying any functions, features and/or applications grouped within that content
`
`mode.
`
`Asnoted above, the Office Action relies on Ledbetter’s disclosure of “media player software
`
`[] loaded and automatically executed” in media consumption mode, “handwriting recognition
`
`software [] loaded and automatically executed” in tablet mode, “walk-up types of information (e.g.,
`
`weather, messages, the internet and so forth) may be loaded” in walk-up mode, and “typical
`
`10208775.5
`
`HP Inc. - Exhibit 1005 - Page 3513
`
`HP Inc. - Exhibit 1005 - Page 3513
`
`

`

`Application No.: 90/014,965
`
`15
`
`Docket No.: L2039.70001US10
`
`shortcuts and other information used for working/productivity ... may be displayed” in workstation
`
`mode. OA at 6. The ‘844 Patent specification refers to these as “particularfunctions, features or
`
`applications” that may be grouped within a content mode (‘844 Patent, 12:22-35), and makesclear
`
`that displaying the “particular functions, features or applications within” a content mode is not the
`
`same thing as displaying the content modeitself. /d., 11:37-40, 12:6-7, 12:22-35; see also e.g., Fig.
`
`11 (the LiTL media playeris an application program that is displayed separately from the “Media”
`
`content mode 172a displayed on Figs. 12 and 17).
`
`IV.
`
`Conclusion
`
`LiTl appreciates the examiner’s consideration of this interview agenda andlooks forward to
`
`discussing these and any other issues the examiners would like to address during the interview.
`
`Dated: November 18, 2022
`
`/ Gerald B. Hrycyszyn/
`Edward J. Russavage, Reg. No. 43,069
`Richard F. Giunta, Reg. No. 36,149
`Gerald B. Hrycyszyn, Reg. No. 50,474
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, Massachusetts 02210-2206
`617.646.8000
`
`10208775.5
`
`HP Inc. - Exhibit 1005 - Page 3514
`
`HP Inc. - Exhibit 1005 - Page 3514
`
`

`

`Application No.: 90/014,965
`
`16
`
`Docket No.: L2039.70001US10
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §1.248 and §1.550(f), the undersigned herebycertifies that a copy of
`
`this INTERVIEW AGENDAIN EX PARTE RE-EXAMINATION,in Reexamination No.:
`
`90/014,965, including all attachments, exhibits, and documentsfiled therewith, will be served by
`
`first-class mail upon:
`
`KLARQUIST SPARKMAN,LLP
`121 SW SALMON STREET
`SUITE 1600
`PORTLAND,OR 97204
`
`Dated: November 18, 2022
`
`/ Gerald B. Hrycyszyn/
`Gerald B. Hrycyszyn
`Reg. No. 50,474
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, Massachusetts 02210-2206
`617.646.8000
`
`10208775.5
`
`HP Inc. - Exhibit 1005 - Page 3515
`
`HP Inc. - Exhibit 1005 - Page 3515
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`First Named Inventor:
`Application No.:
`Confirmation No.:
`Filed:
`For:
`
`Examiner:
`Art Unit:
`
`Yves Behar
`90/014,965
`3442
`February 25, 2022
`PORTABLE COMPUTER WITH MULTIPLE
`DISPLAY CONFIGURATIONS
`Christina Y Leung
`399]
`
`EXHIBIT B
`
`DECLARATION OF ERIC J. GOULD BEAR
`
`IN SUPPORT OF PATENT OWNER RESPONSE TO
`
`NON-FINAL OFFICE ACTION UNDER37 CFR1.111
`
`HP Inc. - Exhibit 1005 - Page 3516
`
`HP Inc. - Exhibit 1005 - Page 3516
`
`

`

`TABLE OF CONTENTS
`
`INTRODUCTION — PURPOSE OF THIS REPORT..00.......cccccccceccecceeeeeseeeeeeeteeetseeeenes 1
`
`IL.
`
`POINT OF VIEW & MATERIALS REVIEWED. ....000.ccccccccceecet ete tte ete teetteteeteenieens 1
`
`II.
`
`SUMMARYOF CONCLUSIONS 0000... ecceeceec tect ce ee ceeseeteeteesteeeseeseetseeteenieeneeniees 2
`
`A.
`
`“Content Mode” / “Mode of Content? 2.0.0.0. cccccccccceececccececeeeeeescetseeteetseeteteteeseenes 2
`
`B. Non-ObViousness .......... ccc cece cee eeeeeeee ee eeeseeeeeeteeeseeseesseesseeseeteeteetietseeetsetesteeneens 2
`
`IV.
`
`BACKGROUND AND QUALIFICATIONS....0..occcccccccceeceeee cece eee te teenie etetteeteeteeneens 3
`
`PERSON OF ORDINARYSKILL IN THE ART00... eecee ete ete ttetteeetetseeteeneens 5
`
`A.
`
`B.
`
`Timeof Invention of the ?844 Patent 000.0000 cececcccccnnsececeeseseeeentseseeentaseees 5
`
`Level of Ordinary Skill in the Art... eee cece ees e eects eeeetetteeeseteeteenieens 5
`
`VI.
`
`LEGAL PRINCIPLES AND METHODS 0.00.0... ee eee eseeteeetetteeteeteeteeeteenieens 6
`
`A.
`B.
`
`Interpretation at the Time of Invention 2.000000... ccc cee cette ects teeteenteetieeetitees 6
`Claim Construction ....0..00.cccccccccceeccecccecc cece cece ceeeceteeeeeteeseeeseecsesteesieeteesseesesesteeneess 6
`
`CC. Validity occ ccc ccc ccecceeceecseeseeeseeteesessseesecsseesseeseeeesseesseeseeseessesisesteeseeneeenes 8
`i.
`Obviousness under 35 U.S.C. S103 .oocccccccccccc cece cece cece e cbc eecbsteettteesteeenteeees 8
`
`VIL.
`
`FIELD OF THE INVENTION (..0..0..0ccccccecceccecc cece ce eecete eee eeeteeeesseeseeteeeestetteeetseteeteeneees 9
`
`A.
`B.
`C.
`
`Inventions Necessarily Rely on Existing Technologies........00.00.000 ccc cccccceesetseeteees 9
`The Science of Human-ComputerInteraction .....00.000.000cccccccc cece ceeceteecsetetsteesseees 10
`The ’844 Patent is Concerned with Solving Technical Problems...............0..00.00.0000. 11
`
`VUL
`
`SUMMARYOF THE ’844 PATENT....0....0occccccccceccecceeceeeceteeeeeteeteeeseetseeteeteetietsseeseeeeey 12
`
`A.
`B.
`C.
`
`Physical Configuration “Display Modes” .......0..00.cccccccccccccccceeseceeeeeeeetstetteeteenies 14
`Streamlined GUI Supporting Hierarchical “Map” Navigation .........0.000.0000cceeee 15
`“Content Modes” Support Hierarchical Navigation ......000.000000cccccccse cee eeteeteeenees 16
`
`IX.
`
`ANALYSIS OF CLAIM TERMS ..00...0ccccccccccccecce ccc eee cette tees eetseeectsetiseeeesseetsetietteetiees 18
`
`A.
`B.
`
`“Display Modes” — Claims 10 and 16.00.0000. cece ccc cee cette cee trtetetstetteeneeneey 18
`“Content Mode” — Claims 10 and 16 ..0....ccccccccccceccceee eee ceeeeceeseetseteetsetsseeeeeseeses 20
`
`i.
`
`Displaying a Content Mode Requires Displaying Some Information that
`Represents the Content Mode. ...........0c.cccccccccccceet eect tec te tet t eee teteteteeteetneeeneey 20
`Displaying One or More Functions, Features or Applications That Can
`Be GroupedInto a Content Mode is Different Than Displaying The
`Content Mode Ttself.o.....0..0cccccccccccccccc cece cee cece tine c cbse bbe te cee tietetstetteenetiies 23
`iii.|Using One of the Functions, Features or Applications is Different Than
`Displaying the Content Mode Itself. ......00...0050cccccccccccte cece ee ttte tees tetsteentetnees 23
`
`ii.
`
`i
`
`HP Inc. - Exhibit 1005 - Page 3517
`
`HP Inc. - Exhibit 1005 - Page 3517
`
`

`

`X.
`
`ANALYSIS OF NON-OBVIOUSNESS 0000.e eee eneetenecetsenseetteneeeteenieseentes 25
`
`Ledbetter’s Alleged Content Modes Are Never Displayed to the User...........00..0.0..0... 25
`A.
`B. Displaying Functions, Features and/or Applications Does Not Amountto
`Displaying a Content Mode ooo... ccc ccc tte eet t etre ete tttetetitetteeteeetieniieees 26
`
`XI. CONCLUSION 000.00 eect e cece eee t eee cetetececeeetessetsetesesetsssetstsestsetsteteeenees 27
`
`A.
`
`B.
`
`“Content Mode” / “Mode of Content”... cocci eceeeetecteeetseeseeseetsenteeteeteeenees 27
`
`Non-ODViousneSs .......0. cece cece cece ceeeeeeeeeeeeceeeseeeeeeesseeseseeessecseeteesieesseesseeeeeseenes 27
`
`APPENDIX A —- BEAR CV
`
`
`
`APPENDIX B — TABLE OF INSTANCESOF “CONTENT MODE”
`AND “MODEOF CONTENT”
`
`il
`
`HP Inc. - Exhibit 1005 - Page 3518
`
`HP Inc. - Exhibit 1005 - Page 3518
`
`

`

`I, Eric J. Gould Beardeclare as follows:
`
`L
`
`INTRODUCTION — PURPOSE OF THIS REPORT
`
`1.
`
`I have been retained by counsel for LiTL LLC (“LiTL”), in this action. I have been
`
`asked to provide my independent analysis of how a person of ordinary skill
`
`in the art (a
`
`“POSITA”) at the time of the invention of U.S. Patent No. 8,624,844 (the “’844 Patent”) would
`
`have understoodthe claims of the ’844 Patent when viewedin light of its specification, figures and
`
`claims,
`
`the scope and content of the disclosures contained in Ledbetter et al., U.S. Patent
`
`Publication No. 2007/0058329 Al (“Ledbetter”) and International Pub. No. WO 95/24007
`
`(“Lane”), and whether the claims of the 844 Patent would have been obvious over Ledbetter and
`
`Lane.
`
`2.
`
`This report is limited to the specific issues stated above.
`
`I reserve the right to
`
`provide additional opinionsat the appropriate time.
`
`3.
`
`I am not, and never have been, an employee of LiTL.
`
`I am being compensatedat
`
`the rate of $520 per hour for time spent on this matter. My compensation is not related to the
`
`outcomeof this matter, and I will not receive any additional compensation based on the outcome
`
`of any proceeding involving the LiTL’s Patent.
`
`I.
`
`POINT OF VIEW & MATERIALS REVIEWED
`
`4.
`
`Myopinions, as explained below,are based on my years of education, experience,
`
`knowledge and background in human-computer interaction, as well as my study of relevant
`
`materials for this declaration.
`
`5.
`
`In forming my opinions and preparing this declaration, I have considered andrelied
`
`upon not only the materials listed below and any other documents cited in this declaration, but my
`
`own education, experience, knowledge and backgroundin the relevant art. These materials are the
`
`types of materials that an expert would reasonably consider in forming opinions regarding the
`
`topics discussed herein. I reserve the right to rely on additional information that may be provided
`
`to me in this matter.
`
`6.
`
`I reviewed the Request for ex parte Reexamination of the ’844 Patent under 35
`
`U.S.C. § 302-307 and 37 CFR 1.510 submitted by Lenovo (United States) Inc. (“Lenovo”) (the
`
`“Request’), the Declaration of Christopher Schmandt (the “Schmandt Decl.”) which was Ex.
`
`1
`
`HP Inc. - Exhibit 1005 - Page 3519
`
`HP Inc. - Exhibit 1005 - Page 3519
`
`

`

`1004 to the Request, the ’844 Patent andits file history, Ledbetter, Lane, and the other references
`
`cited in the Request, the Office Action mailed October 12, 2022 (the “OA”), and the Response to
`
`Non-Final Office Action under 37 CFR 1.111 (“Response”) filed with this declaration.
`
`I also
`
`attended the interview held on November 30, 2022 with Examiner Leung.
`
`7.
`
`For consistency and ease of review, my column andline citations to the patent
`
`specification are in “(column:line)” format.
`oe
`
`It should also be understood that from time to time,
`
`while I may refer to a patent’s
`
`“specification” without mention of the patent’s figures, I use the
`
`term “specification” as a shorthand referring to all components of a patentfiling, including the
`
`patent’s written specification, figures, tables, source code and such.
`
`Ti.
`
`SUMMARY OF CONCLUSIONS
`
`8.
`
`Asa result of studying the materials outlined above in Section II and performing
`
`the analysis described herein and measuredagainst the standards outlined below in Section VI,it
`
`is my opinionthat:
`
`A. “Content Mode”/ “Mode of Content”
`
`9.
`
`The phrases “content mode” and “mode of content” as used in the claims and the
`
`specification have no plain or established meaning to a POSITA. Viewed in light of the ’844
`
`Patent specification, a POSITA would have understood that displaying a content mode requires
`
`displaying some information that represents the content mode, andthat displaying a content mode
`
`is different from displaying one or more functions, features or applications that can be grouped
`
`into a content mode.
`
`B. Non-Obviousness
`
`10.
`
`A POSITA would understand that neither Ledbetter nor Lane, alone or in
`
`combination, disclose displaying content modes within the scope of Claims 10 and 16 of the ’844
`
`Patent, let alone disclose displaying a different content mode based on the physical configuration
`
`of the computer.
`
`11.|My opinionsare supported by the evidence in the patent specifications, figures and
`
`claims, as well as the other materials identified above in Section II; and contrary to the OA
`
`discussion regarding these issues, a person ofskill in the art would find corroborating evidence in
`
`the materials identified above in Section IT in support of my findings.
`
`2
`
`HP Inc. - Exhibit 1005 - Page 3520
`
`HP Inc. - Exhibit 1005 - Page 3520
`
`

`

`IV.
`
`BACKGROUND AND QUALIFICATIONS
`
`12.|While I summarize my qualifications below asit relates to the analysis and opinions
`
`in this declaration, more detailed qualifications can be found in my curriculum vitae (“CV”),
`
`attached to this declaration as Appendix A,
`
`including a summary of my professional and
`
`educational background.
`
`13.
`
`For over 35 years,
`
`I have been involved in the research,
`
`teaching, design,
`
`development and manufacturing of graphical user interface (“GUI’) and other hardware and
`
`software user experience (“UX”) technologies.
`
`In this field, I have been namedfirst inventor on
`
`84 issued U.S. patents. I am also the first named inventor on a numberofinternational patents and
`
`patent applications.
`
`14.
`
`Inventions of mine for which patents have been issued relevant to the ’844 Patent
`
`include real-time communicationsarchitectures, auxiliary visual displays for personal computers,
`
`auxiliary processing by sleeping computing devices, methods for navigating content using media
`
`transport controls symbolic and schematic displays of protocol-specific information, user
`
`interfaces for visualizing data backup and recovery, and handheld multi-channel
`
`interactive
`
`environments.
`
`15.
`
`These inventions have been licensed to a wide range of companies, among which
`
`are the largest consumerelectronics and operating system companiesin the world,all of the major
`
`motion picture studios in the United States, and other Fortune 500 industry players.
`
`16.
`
`Ofparticular additional relevance to this matter is my work as managerof the user
`
`experience team that created and brought to market Microsoft’s Tablet PC SKU.
`
`I managed
`
`software interface designers, hardware industrial designers, user researchers, and user assistance
`
`experts, organizing separate disciplines into a unified practice.
`
`I also worked closely with third
`
`party hardware manufacturers experimenting with a variety of fixed and convertible form factors
`
`for tablet computing devices with and without keyboards.
`
`17.
`
`Also relevant to this matter is the convergence of my work on consumergraphical
`
`user interfaces, the design of touch screen user interfaces of various form-factors, and the design
`
`of user interfaces for video and media control — from universal remote controls (Logitech;
`
`Microsoft) and mobile phones (Samsung) to car dashboards (Ford), blood analyzers (Luminex)
`
`and hospital handhelds (Novartis).
`
`In each case, I led a team of user interface and interaction
`
`HP Inc. - Exhibit 1005 - Page 3521
`
`HP Inc. - Exhibit 1005 - Page 3521
`
`

`

`designers in studying real-world usability challenges and writing functional and technical
`
`specifications for engineering teams to implement that addressed those usability challenges.
`
`18.
`
`I have designed and written iOS applications to create virtual reality experiences
`
`that allow users to navigate virtual reality with a handheld or stereoscopic head-mounted display.
`
`One of my inventionsin this field (entitled Walk-in Theater) has enabled stereoscopic viewing via
`
`Google Cardboard and other VR headsets, with a library of 3D experiences by world-famous
`
`media artists.
`
`19.
`
`This invention family has been awarded at least eight U.S. patents, and research
`
`results were published in the MITPress journal, Leonardo.
`
`20.
`
`In 2017, I adapted the interaction technologiesto the piloting of drones using head-
`
`mounted displays. A drone aviation app (entitled Ze/eport) and a tutorial game embodying the
`
`technology (entitled BodyNav) are both available in the iOS AppStore. In 2018, to provide hands-
`
`free locomotion, smootheruserinteractions, a reduction in motion sickness and enhancedphysical
`
`presencein 3rd party virtual worlds, I designed and led the development of a body-based extended
`
`reality (“XR”) developer kit for HTC Vive and OculusRift.
`
`21.
`
`Since 2013, I have been a partner and angel investor at Austin’s Capital Factory
`
`start-up incubator, where I have served as an advisor to executivesin intellectual property strategy
`
`and the design and development of new hardware, software and services.
`
`22.
`
`From 2015 to 2020, I served as the Chief Experience Officer, Corporate Secretary,
`
`lead investor, and a board director of Curb, Inc., an energy technologystart-up companythat builds
`
`integrated hardware and software systems for visualizing and managing energy in residential and
`
`commercial settings. At Curb, I advised executives, mentored engineers and managed legal
`
`operations, including patent prosecution and intellectual property licensing.
`
`In August of 2020,
`
`Curb wasacquired by Elevation Home Energy Solutions,Inc.
`
`23.
`
`In addition to gaining relevant expertise through the academic training, professional
`
`experiences and research accomplishments described above,I stay abreast of the user experience
`
`field by reading technical literature and attending and presenting at conferences across the nation
`
`and internationally.
`
`I have also served as a director on the board of several non-profit
`
`organizations.
`
`24.
`
`My experience designing and evaluating user interfaces over the last 35+ years,
`
`including the optimization of human performance through the use of computing technology and
`
`4
`
`HP Inc. - Exhibit 1005 - Page 3522
`
`HP Inc. - Exhibit 1005 - Page 3522
`
`

`

`automated feedback of various forms and modalities, as well as my background hiring and
`
`managing teams of user experience professionals, all position me as an expert in the design and
`
`development of graphical user interfaces with a nuanced understanding of what people of skill in
`
`the art would have knownat the times of invention of the ’844 Patent.
`
`Vv.
`
`PERSON OF ORDINARYSKILL IN THE ART
`
`25.
`
`All of the opinionsI express herein have been made from the standpoint of a person
`
`of ordinary skill in the art at the time of the invention of the ’844 Patent, which I mayreferto as a
`
`“POSITA.” Tunderstand that a POSITAis a hypothetical person whois presumed to be aware of
`
`all pertinent prior art and the conventional wisdom in theart at that time, and is a person of ordinary
`
`creativity.
`
`A. Time of Invention of the ’844 Patent
`
`26.
`
`The application which led to the issuance of the ’844 Patent (US Application no.
`
`12/170,951; the “’951 Application”) wasfiled on July 10, 2008. The earliest patent application
`
`in the continuity lineage which led to the issuance of the ’844 Patent (Provisional US Application
`
`No. 61/041,365; the “’365 Application”) was filed on April 1, 2008.
`
`I have not analyzed which
`
`limitations benefit from any date other than April 1, 2008 and myreliance on that date should not
`
`be construed as an opinion on the issues of conception and reduction to practice of the claimed
`
`inventions in the °844 Patent. Therefore, in this declaration, I have evaluated the meaning that
`
`certain terms in the patent would have had to a POSITAas of April 1, 2008. But my opinions
`
`would not be materially different if the priority date was July 10, 2008.
`
`27.
`
`I reserve the right to supplement my opinionsas necessary.
`
`B. Level of Ordinary Skill in the Art
`
`28.
`
`I have considered the level of ordinary skill in the art at the time of invention of the
`
`844 Patent using the following factors: (1) the types of problems encountered in the art; (2) the
`
`prior art solutions to those problems; (3) the rapidity with which innovations are made; (4) the
`
`sophistication of the technology; and (5) the education level of active workersin the field. Ina
`
`given case, every factor may not be present, and one or more factors may predominate.
`
`29.
`
`Considering these factors, I believe a POSITA in this matter would have had: (1) a
`
`Bachelor’s degree with a focus on human-computer interaction (such as industrial design, user
`
`HP Inc. - Exhibit 1005 - Page 3523
`
`HP Inc. - Exhibit 1005 - Page 3523
`
`

`

`interface design, cognitive science or computerscience), plus at least two years of work experience
`
`in designing hardware and/or software aspects of user interfaces for portable computing devices.
`
`Alternatively, the POSITA could have received a graduate degree such as a Master’s degree in the
`
`samefield with at least one year of work experience in designing hardware and/or software aspects
`
`of user interfaces for portable computing devices.
`
`30.
`
`Though I have submitted a declaration associated with the °844 Patent in a co-
`
`pendinglitigation that articulated the level of skill in the art using slightly different terms, thereis
`
`no substantive difference between the two articulations. My opinions in this declaration would
`
`not changeif I had used the previousarticulation of the level of skill in theart.
`
`31.—Based on my qualifications, I am and wasat the relevant time a POSITArelevant
`
`to the ’844 Patent. I am also an expert with an understanding of what a POSITA would knowat
`
`the time of invention of the ’844 Patent.
`
`VI.
`
`LEGAL PRINCIPLES AND METHODS
`
`32.
`
`Although I am notan attorney and offer no opinions of law, I have been informed
`
`by counsel of the legal standards that apply. In forming my analysis and conclusions expressed in
`
`this declaration, I have applied the legal principles described in the following paragraphs, with
`
`which I am familiar from my own extensive experience with the patenting process.
`
`A. Interpretation at the Time of Invention
`
`33.
`
`J interpreted the meaning ofthe claims as a POSITA would understand them at the
`
`time of invention of the ’844 Patent.
`
`B. Claim Construction
`
`34.
`
`I have been informed by counsel of the legal standards that apply with respect to
`
`claim construction.
`
`I understand that claim construction is the process by which a fact finder
`
`determines the scope and meaning of terms usedin the claimsofa patent.
`
`35.
`
`I have been advised by counsel that claim terms that do not have any special
`
`meaning to a POSITA should generally be given their “plain and ordinary” or “ordinary and
`
`customary” meaning.
`
`I have also been advised that claim terms should generally be construed as
`
`a whole, as meaning is often context dependent.
`
`In some cases, though, the patent specification
`
`HP Inc. - Exhibit 1005 - Page 3524
`
`HP Inc. - Exhibit 1005 - Page 3524
`
`

`

`may reveal a special definition given to a claim term by the patentee that differs from the meaning
`
`it would otherwise possess. In such cases, the inventor’s lexicography governs.
`
`36.
`
`Tunderstandthat during a reexamination proceeding, claim terms are to be accorded
`
`their "broadest reasonable interpretation” (“BRI”), but that the best source for determining the
`
`meaning of a claim term underthat standard is the claims themselves and the specification.
`
`37.
`
`In all cases, even under the BRI standard, I understand that claims must be read in
`
`view of the specification and the record evidence, because they do not have meaning removed
`
`from the context from which they arose and with an interpretation that a POSITA would reach.
`
`Thus, I understand that the relevant inquiry in claim construction 1s the question of how a POSITA
`
`would have understood the claim terms at the time ofthe earliest priority date, in light of the patent
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`specification, including the claims themselves andall text and figures, as well as the prosecution
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`history, and any other relevantintrinsic and extrinsic evidence.
`
`38.
`
`I understand that the prosecution history of a patent provides evidence of how the
`
`PTO andthe inventor understood the patent.
`
`I understand that because the prosecution history
`
`represents an ongoing negotiation between the PTOandthe applicant, rather than the final product
`
`of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim
`
`construction purposes.
`
`I understand that post-grant proceedings(e.g. inter partes reviews and ex
`
`parte reexaminations) involving a patent are part of that patent’s prosecution history.
`
`39.
`
`I understand that if a disputed claim term lacks an accepted meaningin the art and
`
`thus has no plain or established meaning to a POSITA,then its meaning must be found elsewhere
`
`in the patent. Wherethat is the case, I understand that fact finders construe such a term only as
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`broadly as provided for by the patentitself.
`
`40.
`
`Extrinsic evidence, including dictionaries and learned treatises, may be considered
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`only when the meaningof a term is unclear in view of the patent and its prosecution history.
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`Al.
`
`I understand that claim terms should be construed consistently throughouta patent.
`
`In other words, each term should have the same meaning wheneverit appears in the claims. I have
`
`also been advised that the prosecution history of a patent can be considered in the claim
`
`construction process, but that it is less useful than the specification of the patent.
`
`I have been
`
`advised that the prosecution history may reveal an interpretation that was disclaimed by the
`
`applicant, but that such a disclaimer must be unequivocal and unmistakable in orderto be effective.
`
`HP Inc. - Exhibit 1005 - Page 3525
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`HP Inc. - Exhibit 1005 - Page 3525
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`42.
`
`I have been advised that claim construction is intended to resolve disputed
`
`meanings and technical scope, to clarify, and when necessary to explain what the patentee covered
`
`by the claims, but that it is not an obligatory exercise in redundancy.
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`C. Validity
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`i. Obviousness under 35 U.S.C. §103
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`43.
`
`I have been informed that a patent claim is only invalid as “obvious” under 35
`
`U.S.C. §103 in light of one or more prior art references if all of the claim elements and their
`
`limitations would have been obviousto a person of ordinary skill in the art at the time of the alleged
`
`invention POSITA,taking into account(1) the scope and contentof the priorart, (2) the differences
`
`between the prior art and the claims, (3) the level of ordinary skill in the art, (4) any so called
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`“secondary considerations” of non-obviousness, which include long-felt but unsolved needs for
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`the claimed invention, commercial success attributable to the claimed invention,
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`industry
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`acceptance, praise, unexpected results of the claimed invention, skepticism of others, failure by
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`others to achieve the claimed invention, and “copying”of the claimed invention by others, and (5)
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`any other objective evidence of non-obviousness.
`
`
`
`44. [understandthat a claim of obviousness may be based onasingle priorart reference
`
`or multiple prior art references, taken in combination, but that a patent claim comprised of several
`
`elements is not proved obvious merely by demonstrating that each of its elements was knownin
`
`the prior art. To be obviousin light of a single prior art reference or multiple prior art references,
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`there must be a reason that would have prompted a POSITA to modify the single prior art
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`reference, or combine two or more references, in a manner that achieves the claimed invention.
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`This showing may come from a teaching, suggestion, or motivation to combinein the priorart, or
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`may come from the reference(s) themselves, the knowledge of a POSITA (including inferences
`
`and creative steps a POSITA would employ), or from the nature of the problem to be solved, and
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`this reason may be explicit or implicit from the prior art as a whole.
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`I have been informedthat,
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`under the law, the combination of familiar elements according to known methodsis likely to be
`
`obvious when it does no more than yield predictable results.
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`I also understandit is improper and
`
`impermissible, however,
`
`to rely on hindsight
`
`in making an obviousness determination.
`
`I
`
`understand that even when there is a motivation to modify or combinethe priorart to achieve the
`
`HP Inc. - Exhibit 1005 - Page 3526
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`HP Inc. - Exhibit 1005 - Page 3526
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`claimed invention, a POSITA would also need a reasonable expectation of success in making the
`
`proposed modification or combination for the claimed invention to be obvious.
`
`45.
`
`I understand that a claimed invention is not obvious whenthepriorart discourages
`
`or teaches away from the claimed invention. Further, I understand that “teaching away” does not
`
`require that the prior art foresaw the specific invention claimed in the patent and warned against
`
`taking that path; rather, the prior art design itself may teach away from the claimed invention.
`
`46.
`
`I understand that in an obviousness analysis, only analogousart may be considered.
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`Art is considered analogousif it is from the samefield of endeavoras the patent. If it is not from
`
`the samefield of endeavor, it may be considered analogous if it is reasonably pertinent to the
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`particular problem with whichthe patentis involved. A reference is reasonably pertinentif, though
`
`in a different field, it would have commendeditself to an inventor’s attention in considering the
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`problem.
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`VII.
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`FIELD OF THE INVENTION
`
`A. Inventions Necessarily Rely on Existing Technologies
`
`47.
`
`No new technology can exist in a vacuum wholly disconnected from the past.
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`Whetherbuilt using metal, wood, plastic or pixels on a computerscreen,all innovations must — to
`
`some extent — be made from a combination of known components. Pixels are building block
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`materials used to construct software interfacesjust like plastic is a building block material used to
`
`construct hardwarecontrols.
`
`48.|There are myriad user interface visualization and interaction techniques known to
`
`be employable when creating new user experiences. The existence of these techniques, a.k.a.
`
`technologies, is akin to the existence of raw physical building materials. Just like building a house,
`
`certain technologies lend themselvesto certain types of use. Similarly, certain technologies draw
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`designers of software systems into using them in particular combinations. Simply knowing that
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`various technologies exist that can be used for a variety of purposes is not enough to motivate,
`
`inspire or enable someone to combine such techniques in new ways. Nonetheless, I believe it
`
`important
`
`to establish that human-computer perception and/or human-computer interaction
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`innovations should not be treated differently from innovations based on physical technologies not
`
`built using software toolkits. The field of innovations in the human-computerinteraction space is
`
`HP Inc. - Exhibit 1005 - Page 3527
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`HP Inc. - Exhibit 1005 - Page 3527
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`one in which significant patentable advances can be, and have been, made. It is, indeed, the field
`
`to which I have devoted my careeras an inventor.
`
`B. The Science of Human-ComputerInteraction
`
`49.
`
`Understanding the inventiveness of the ’844 Patent depends upon understanding
`
`the field of the invention — which is the science of human-computer interaction (“HCT’), also
`
`knownasuser experience (“UX”) design — as applied in contexts such as graphical user interfaces
`
`that organize and streamline interface elements into a plurality of views of computer content for
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`presentation to a user (’844 Patent, Abstract).
`
`50.
`
`The discipline of user experience grew out of ergonomics and what wasoncecalled
`
`man-machineinterface (“MMI”).
`
`It is generally concerned with how to make machinesreliably
`
`responsive to human expression while being easy to use and unobtrusive. The userinterface (“UI’)
`
`or graphical user interface (“GUI’) is the boundary or bridge between a person and a machine. It
`
`includes the physical hardware and logical software, capturing concrete measurable human input
`
`and outputting processed information for human perception. To be clear, just as HCI is concerned
`
`with the science of interaction between humans and computers, the inventions of the ’844 Patent
`
`is concerned with functional hardware and software technologies for accomplishing speed in
`
`human interactions, accuracy of human interactions, and a minimum of human error in such
`
`interactions.
`
`51.
`
`By the time of invention of the ’844 Patent, many corporations had established a
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`track record of investing into user experience research and design to craft and improve the
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`engineering of their own products and the industry’s technical competency. Among such
`
`companies are, Apple, IBM, Microsoft, Sony, AT&T, HP, and Intel. By the time of invention of
`
`the ’844 Patent, there were likewise many leading non-profit institutions and agencies with not