UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`HAPTIC, INC.
`Patent Owner
`
`
`Case IPR2024-01475
`Case IPR2024-01476
`U.S. Patent 9,996,738
`
`DECLARATION OF JASON JANÉT
`(SUBMITTED WITH PATENT OWNER’S PRELIMINARY RESPONSE)
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`HAPTIC EX2001
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 5
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`BACKGROUND AND QUALIFICATIONS ................................................. 5
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`III. LEGAL STANDARDS ................................................................................. 17
`A.
`Patentability ......................................................................................... 17
`B.
`Prior Art ............................................................................................... 22
`C.
`Inherency ............................................................................................. 22
`D.
`Person of Ordinary Skill In The Art .................................................... 23
`E.
`Claim Construction ............................................................................. 24
`
`IV. BASES FOR OPINIONS .............................................................................. 26
`
`V.
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`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 27
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`VI. CLAIM CONSTRUCTION .......................................................................... 29
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`VII. OPINIONS ON PATENTABILITY OF THE CHALLENGED
`CLAIMS ........................................................................................................ 30
`A. Asserted Grounds ................................................................................ 30
`B.
`Technological Background ................................................................. 31
`
`1.
`
`Vibration Detection and Sensor Technology ................................. 32
`Vibration ................................................................................... 32
`Accelerometers and Piezoelectric Transducers ........................ 37
`Accelerometer Mounting .......................................................... 39
`
`a.
`b.
`c.
`
`The ’738 Patent .............................................................................. 41
`2.
`C. Ground 1A ........................................................................................... 46
`2
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`1.
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`2.
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`Independent Claims 1 and 10 ......................................................... 46
`
`The Asserted References ................................................................ 49
`a. Murakoshi ................................................................................. 49
`b.
`Stewart ...................................................................................... 51
`
`3. Whether a POSITA would have considered the challenged
`claims obvious in view of Ground 1A (Murakoshi-Stewart) ........ 56
`a. Whether there was a Motivation to Combine and
`Reasonable Expectation of Success in Achieving the
`Claimed Invention ..................................................................... 57
`Analysis of Apple’s Arguments and Evidence in Support
`of the Combination of Murakoshi-Stewart ............................... 60
`i. Apple’s Motivation to Combine Arguments and
`Evidence .................................................................................... 60
`ii. Apple’s Reasonable Expectation of Success Arguments
`and Evidence ............................................................................. 68
`
`b.
`
`4. Whether Ground 1A Discloses or Suggests All Elements of the
`Challenged Claims ......................................................................... 70
`Independent Claim Elements [1b-v] and [10b-iv] .................... 70
`a.
`Independent Claim Elements [1e] and [10c] ............................ 72
`b.
`Dependent Claims ..................................................................... 75
`c.
`D. Ground 1B ........................................................................................... 75
`E.
`Ground 1C ........................................................................................... 75
`F.
`Ground 2A ........................................................................................... 78
`
`1.
`
`The Asserted References ................................................................ 78
`iFixit .......................................................................................... 78
`Li ............................................................................................... 79
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`a.
`b.
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`2. Whether a POSITA would have considered the challenged
`claims obvious in view of Ground 2A (Li-iFixit) .......................... 84
`a. Whether there was a Motivation to Combine or
`Reasonable Expectation of Success in Achieving the
`Claimed Invention ..................................................................... 86
`i. Whether a POSITA would have understood that Li’s
`gesture detector could be positioned on the iPhone’s logic
`board. ......................................................................................... 87
`ii. Whether a POSITA would have understood that the
`detector could be indirectly mounted on the iPhone’s logic
`board and successfully implement Li’s method. ...................... 90
`iii. Li’s addition of its gesture detector to the iPhone
`despite the iPhone’s existing accelerometer. ............................ 91
`iv. Apple’s inability to implement its “Back Tap” feature
`on the iPhone 6. ......................................................................... 92
`Analysis of Apple’s Arguments and Evidence ......................... 95
`i. Apple’s First and Second Motivations ................................ 95
`ii. Apple’s Third and Sixth Motivations .................................. 96
`iii. Apple’s Fourth Motivation ................................................104
`iv. Apple’s Fifth Motivation ...................................................104
`v. Apple’s Reasonable Expectation of Success Assertions ...107
`G. Ground 2B .........................................................................................109
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`b.
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`VIII. CONCLUSION ............................................................................................110
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`I. INTRODUCTION
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`1. My name is Jason Janét. I have been retained as a technical expert by
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`Haptic, Inc. (“Haptic”) and asked to provide my objective and unbiased opinions
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`concerning U.S. Patent No. 9,996,738 (“the ’738 Patent”). Specifically, I have been
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`asked to provide my opinions on the patentability of the challenged claims of
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`the ’738 Patent in view of the grounds advanced in the pending Petitions for Inter
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`Partes Review filed by Apple, Inc. (Petitioner or Apple herein) for the ’738 Patent
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`(IPR2024-01075, IPR2024-01076), the state of the art at the time of the claimed
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`inventions, and the knowledge of a person of ordinary skill in the art at the time of
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`the claimed inventions.
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`2.
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`I understand that this declaration will be filed as an exhibit to the Patent
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`Owner’s Preliminary Response in each of the referenced IPR proceedings.
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`II. BACKGROUND AND QUALIFICATIONS
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`3.
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`In forming the opinions expressed in this Declaration, I have considered
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`and relied upon my education, background, and experience. In addition, I have
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`reviewed and relied upon additional materials in preparation of this Declaration, as
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`described herein. I understand my curriculum vitae is being submitted with this
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`declaration as an exhibit to the Patent Owner’s Preliminary Response.
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`4.
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`I currently serve as a Corporate Director for Applied Research
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`Associates (“ARA”). I previously served ARA as Chief Technology Officer. I have
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`also held the rank of Adjunct Associate Professor at Duke University and at North
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`Carolina State University. I hold active Top Secret (TS) and Sensitive
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`Compartmentalized Information (SCI) security clearances.
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`5.
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`I received a Bachelor of Science in Mechanical Engineering from the
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`University of Virginia in 1990; a Master of Integrated Manufacturing Systems from
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`the Integrated Manufacturing Systems Engineering Institute at North Carolina State
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`University in 1994; and a Ph.D. in Electrical and Computer Engineering from North
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`Carolina State University in 1998.
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`6.
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`Since the 1980s, I have served in multiple capacities while designing,
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`engineering, implementing and supporting automated systems, including integrated
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`sensors, human-machine interfaces, and actuators.
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`7.
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`In general, I have been active in the intelligent electromechanical
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`systems field for decades. My Master’s thesis, entitled Global Motion Planning and
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`Self- Referencing for Autonomous Mobile Robots, leveraged graph theory, feedback
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`and sensors to optimize mobile robot movement through, and perception of,
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`environments. My Ph.D. dissertation, entitled Pattern Analysis, Tracking and
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`Control for Autonomous Vehicles, leveraged multiple mobile robots, sensors, and
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`neural networks to enhance simultaneous localization and mapping (SLAM), as well
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`as the sharing of knowledge between multiple different mobile robots. I have
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`authored numerous publications and have co-authored a textbook entitled
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`Computational Intelligence.
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`8.
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`I have designed, built, and marketed robots, automated systems, toys,
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`measuring systems and components thereof, including ground mobile robots,
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`unmanned aerial vehicles (“UAVs”), unattended sensors, automated storage and
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`retrieval
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`systems
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`(ASRS),
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`submersible mobile
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`robots, proof-of-concept
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`extraterrestrial robots, manually manipulated (“twiddled”) submersible foils, wall-
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`climbing mobile robots, corner-grip shelving systems, proximity and ranging
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`systems, point-cloud systems, pattern analysis tools, and augmented reality systems.
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`9.
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`I have taught the following courses: Introduction to Robotics and
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`Automation (Duke and NCSU, 1996-2016); Introduction to Control Theory (Duke
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`and NCSU, 1999-2014); Distributed Real-Time Controls (NCSU, 1994-1998); and
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`a myriad of courses in Mechanical Engineering, Biomedical Engineering,
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`Electrical/Computer Engineering, Industrial Engineering and Systems Engineering.
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`I have also served on several M.S.- and Ph.D.-level graduate student committees and
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`qualifying exams, served on the NCSU IMSEI Board, and participated in curriculum
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`development for undergraduate and graduate-level programs, including the NCSU
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`B.S.- and M.S.-level Mechatronics curricula.
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`10.
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` I have built, sponsored, and advised multiple champion student teams
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`for international robot competitions including, but not limited to, the National
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`Aeronautics and Space Administration (NASA)/American Society of Civil
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`Engineers (ASCE) Extra-Terrestrial Robotics Competition, the Defense Advanced
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`Research Projects Agency (DARPA) Grand Challenge, the Association for
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`Uncrewed Vehicle Systems International (AUVSI)/ the Office of Naval Research
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`(ONR) Autonomous Underwater Vehicle Competition, and the European Climbing
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`and Walking Robots (CLAWAR) Wall-Climbing Robot competition.
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`11.
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`I have initiated multiple unmanned systems projects at both academic
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`and industry levels. Academic UAVs include, but are not limited to, Quadcopters
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`with Hybrid Remote and Autonomous Control, Marsupial UAVs that Deploy and
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`Recover Unmanned Ground Vehicles, and Wall-Climbing UAVs. Additionally, the
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`AngelFish Cross-Domain Submersible UAV, a DARPA anti-submarine warfare
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`(ASW) program that I launched at Teledyne, included a partnership with North
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`Carolina State University. UUVs include, but are not limited to, the MicroHunter-
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`class of very small underwater robots; the PilotFish, Gamera, Artemis and other
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`holonomic robots; submersible crawlers that are used in nuclear reactors, and the
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`little benthic crawler (LBC1) hull inspection system; and the hull bio-inspired
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`underwater grooming (HULLBUG) hull cleaning system. Unmanned ground
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`vehicles include, but are not limited to, the miniature PERRY, wall-climbers, all-
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`terrain and subterranean crawlers. Many of these have employed sensors including
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`inertial measurement units, impact, proximity and ranging.
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`12.
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`I have supported multiple toy-focused ventures with companies
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`including, but not limited to, Marvel, Hasbro, Twidco, Spin Master, Nottingham-
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`Spirk, IDEO, ARA, and other firms. For Marvel, multiple Spiderman toys were
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`conceived and developed and validated, including the Spiderman Wall-Climbing
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`Car, the Corner-Climbing Spider, and the Inflatable Wall-Climbing Spiderman. For
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`Hasbro, a proprietary corner-gripping technology was employed to place basketball
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`goals in corners. For Twidco, a proprietary flapping foil technology was combined
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`with multiple fish shapes (e.g., shark and clownfish) to enable users to create fishlike
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`motion by “twiddling” a connecting cable from above. For Spin Master and multiple
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`design firms, multiple wall-climbing toys were developed for small wall-climbing
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`robot concepts, including simple radio control vehicles and the “Hangtime 540”
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`Tony Hawk aerial skateboard toy. For ARA, augmented reality systems for indoor
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`and outdoor games were developed.
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`13.
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`In 1999, while I was employed by Nekton Research (“Nekton”), I
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`captured and managed multiple programs sponsored by the DoD and private-sector
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`companies that focused primarily on AUVs, ROVs, TwiddleFish toys, and indirect-
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`fire projectiles. During my tenure, Nekton entered into a joint venture agreement
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`with the founders of what eventually became known as Parata Systems–a pharmacy
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`automation solutions company, which I supported launching.
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`14. After leaving Nekton in March 2002, I joined a then New Jersey-based
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`company called Avionic Instruments, Inc. (“Avionic”). While at Avionic, I
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`continued developing and marketing robots and supported engineering related to
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`various design, manufacturing, quality and assembly issues on the core aerospace
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`product lines. Avionic product lines include, but are not limited to, ducted fans,
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`transformer-rectifier units (“TRU”), regulated TRU (RTRU), auxiliary power unit
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`(“APU”) control systems, power distribution systems (PDUs), frequency converters,
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`corner clamps, and VRAM attractors/thrusters. Customers included DoD, NASA,
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`Boeing, Sikorsky, Augusta-Westland, Dassault, and Lockheed-Martin. During my
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`tenure at Avionic, I supported multiple initiatives, including our FAA-compliant and
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`MIL-Spec testing and qualification suite which relied on sensors for shock,
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`vibration, temperature, salt, fog, spray radiated emissions, conducted emissions, etc.
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`15. At Avionic, I was also tasked with ruggedizing, optimizing, and
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`commercializing two emerging proprietary technologies: the “CFG” and “VRAM”.
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`The CFG, short for Corner Friction Grip, was a proprietary technology based on
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`non-marring and non-adhesive materials that provided optimal grip patterns on
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`inside and outside corners. CFG formed the basis of a company called “Shelf Works
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`Technologies,” which was spun out of Avionic Instruments in 2004, and whose
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`products were sold in Home Depot, Bed Bath and Beyond, Hammacher Schlemmer,
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`etc. CFG also formed the basis of multiple toys including a miniature basketball goal
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`for Hasbro, and a corner-climbing Spiderman toy for Marvel.
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`16. The VRAM was a patented method for producing attraction forces
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`between an object and a surface. VRAM is euphemistically referred to as a “tornado
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`in a cup” and generally comprises both cylindrical and toroidal flow patterns that
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`result in vacuum-like regions. The VRAM had several applications, including but
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`not limited to: holding breaching charges and sensors against vertical or inverted
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`surfaces; acting as an attractor for wall and ceiling climbing robots; acting as an
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`attractor for submersible hull-crawling robots; filterless vacuuming (conceptually
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`similar to the Dyson vacuum); and robotic pick-and-place end-effector (conceptually
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`similar to a gripper) to move articles from one location (e.g., a conveyor) to another
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`(e.g., a collator). The VRAM also formed the basis for multiple toys including: a
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`wall-climbing car for Spin Master, IDEO and Nottingham-Spirk; a Spiderman car
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`for Marvel; an inflatable wall-climbing Spiderman for Marvel; and the Tony Hawk
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`Hangtime 540 aerial skateboard for IDEO.
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`17. My work with the filterless vacuum VRAM prompted me to explore a
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`concept related to pharmacy automation, which ultimately led to a Ferris- wheel
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`concept for rapidly dispensing pills. In mid-2003, my team conceived of two
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`prescription pill counting mechanisms that actually benefited from centrifugal forces
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`and optimally exploited gravity and vacuum: an inner ring with vacuum-based
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`apertures and an inner-bowl with vacuum-based apertures. The inner-bowl with
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`vacuum-based apertures was deemed most viable, was awarded two U.S. patents,
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`and to this day forms the basis of the RxMedic ADS™ pharmacy robot. The VRAM
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`formed the basis of Vortex HC technologies, many of which have been licensed out
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`to entities including, but not limited to, Teledyne SeaBotix, SeaRobotics, and HDT.
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`Both RxMedic and Vortex HC were officially spun out of Avionic in July 2004, the
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`date Avionic was acquired by Transdigm.
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`18.
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`In late 2004, soon after Avionic was acquired, I, along with others from
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`Avionic, secured funding to develop an alpha-level multi-dispenser pharmacy
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`robotic system and develop the RxMedic business plan and raise multiple rounds of
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`venture capital. In late 2006, RxMedic (called “APDS” until November 2006) was
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`launched as a stand-alone, sole-focus venture. After the operational launch of
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`RxMedic, I served as General Manager and eventually Chief Technical Officer.
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`Through my roles at RxMedic, I oversaw the development of the RxMedic ADS
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`robot, managed the intellectual property portfolio, coordinated sales and marketing,
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`and provided strategic, fiscal, and operational leadership. The RxMedic ADS is an
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`AS/RS that prepares prescriptions by the storage, retrieval and bundling of
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`bottles/vials, labels, oral solid medications, caps and quality assurance imaging
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`(generally within retail, hospital and mail-order settings). In May 2010, J.M. Smith
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`Corporation acquired RxMedic, and to assist in the change of ownership, I served as
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`a Director of Robotics until May 2011. During my tenure at RxMedic, under J.M.
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`Smith’s ownership, I supported the evaluation, development and integration of a
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`high-volume AS/RS system at the Smith Drug wholesale distribution center in
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`Spartanburg, South Carolina. This AS/RS system comprised a broad spectrum of
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`interoperating robotic systems including mobile, pick-and-place, conveyor, and
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`others.
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`19. Also in late 2004, after Avionic was acquired, I, along with others from
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`Avionic, secured funding for Vortex HC through DoD contracts and robot sales, to
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`continue developing the VRAM Mobile Robot Platform (VMRP – a wall-climbing
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`robot), the ARTEMIS AUV (a holonomic submersible robot for counter-mine and
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`counter-obstacle operations), the submersible crawler, the nuclear-grade boiler
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`water reactor (BWR) inspection robot, and other robot products centered around the
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`VRAM. Some DoD programs were/are classified, for which I maintained a SECRET
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`clearance at both the personal and facilities level, and served as the facilities security
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`officer (FSO). In late 2006, corresponding to the full launch of RxMedic, Vortex HC
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`technologies were largely licensed to Teledyne SeaBotix, SeaRobotics, and HDT.
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`However, I have continued to support Vortex HC licensees and customers to-date.
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`20. After the sale and transition of RxMedic I joined Teledyne
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`Technologies in Summer 2011. I served as the Senior Manager for the RTP division
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`of Teledyne Scientific, and supported multiple DoD-sponsored robotic-focused
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`programs. Some of these programs were/are classified, for which I maintained a
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`personal SECRET clearance.
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`21. Among these programs were cargo unmanned ground vehicles
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`(CUGV); squad-level autonomous unmanned ground vehicles (UGV); AUVs;
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`UUVs; a cross-domain autonomous vehicle capable of transitioning between air,
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`surface, and underwater-domains; the EXtreme ACcuracy Tasked Ordnance
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`(EXACTO) program for optically tracking and steering bullets to targets; and light
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`detection and ranging (LIDAR) systems for UGVs, as well as the mapping of urban
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`and subterranean environments (along with sister-company Optech); and
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`technologies for AS/RS, industrial automation and inspection systems with/for
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`strategic partner Rockwell Automation (previous owner of what became the
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`Teledyne Scientific & Imaging business unit). These systems employed inertial,
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`shock and contact/vibration sensors.
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`22. Cross-domain vehicles that were evaluated, designed, and prototyped
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`included, but were not limited to: the AngelFish (later called “EagleRay”) cross-
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`domain submersible UAV for anti-submarine warfare, as well as a ball-shaped robot
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`for beach, ground, and surf-zone countermine operations. Sensor design, refinement
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`and signal processing was a major component of each program. Sensors employed
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`include, but are not limited to, proximity sensors; ranging sensors; electro-optical
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`imaging; LIDAR; long-, short- and mid-wave infrared (IR); inertial measurement
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`units (IMU); optical flow; and radio-frequency (RF). Additionally, control systems
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`were designed, refined and integrated into the aforementioned systems. Most control
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`systems were closed-loop, in that they utilized sensor-based feedback; others were
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`open- loop, where states were estimated with little or no feedback.
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`23.
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`In late 2013, Avionic, a TransDigm business unit at that point,
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`requested that I return to turn around both a supply-chain issue and the Sikorsky S97
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`(“S97”) Raider/JMR helicopter programs. The S97 Raider was designed to be the
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`fastest, most maneuverable helicopter, due to its coaxial, counter- rotating variable-
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`pitch wings, and an aft-based push-propeller. Avionic also controlled two business
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`units named Acme Aerospace (“Acme”) and Aerospace Cooling Solutions (“ACS”).
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`Avionic, Acme and ACS supported the S97 program, which ultimately met
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`milestones and continues to produce multiple successful demonstrations. In 2013,
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`TransDigm expanded my role to include directorship of the Avionic, Acme and ACS
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`revenue and engineering teams, and to report operational and financial status at six-
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`week intervals.
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`24. Starting in late 2014, as CEO of Delta Five, I led a private-equity
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`backed, hospitality focused venture, coordinating the company’s launch and
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`strategic path including an early-stage pivot. Initially focused on back-end robotics,
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`AS/RS and general automation, Delta Five augmented its focus to address the
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`rampant bed bug problem—a top priority for hoteliers—with a novel unattended
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`sensor and trap, called the Telemetered Pest Monitoring System (TPMS), which is
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`based on computer vision, IoT, and software as a service (SaaS); it has proven
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`capable of scaling to other pests. In addition to the TPMS, Delta Five developed a
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`novel means to mass produce a natural, unscented aggregation pheromone that, in
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`concert with placement and heat, lured invertebrates to the TPMS. After leading
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`Delta Five and serving on its Board for four years, I resigned to join ARA, but
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`continue serving Delta Five as a share-holder and transition agent.
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`25.
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`In 2018, I joined ARA as CTO. My primary responsibilities include
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`leading the commercialization and technology transition efforts, which require
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`technical, business and corporate development, as well as the procurement of capital
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`and managing matrixed rosters. Core technologies include, but are not limited to,
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`energy, alternative fuels, biotechnology, robotics, autonomous systems, artificial
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`intelligence, machine learning, non-destructive inspection/evaluation, medical
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`devices/systems, augmented reality, situational awareness, diversionary devices,
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`advanced hearing protection, tactical assault kits (TAK), ballistic gear, directed
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`energy weapons, unattended sensors, risk analysis, etc. Many of these systems are
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`based on smartphones (Android and iOS), and utilize various internal and external
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`sensors. I currently hold a Top-Secret security clearance with Sensitive
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`Compartmented Information (TS/SCI).
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`26.
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`I have no financial interest in Haptic or the ’738 Patent. I am being
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`compensated for my time spent in connection with these proceedings at my standard
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`hourly rate. I am also being reimbursed for reasonable expenses, such as travel
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`expenses. My compensation is not contingent on my opinions, on the outcome of
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`any matter, or on any of the technical positions I explain in this declaration.
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`III.
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`LEGAL STANDARDS
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`27.
`
`I am not an attorney. For purposes of this Declaration, I have been
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`informed about certain aspects of the law that are relevant to my opinions, as set
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`forth below.
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`A. Patentability
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`28.
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`I understand that for an invention claimed in a patent to be valid and
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`patentable, it must be, among other things, new and not obvious in light of what was
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`known and came before it. That which was known or came before the invention
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`claimed is generally referred to as “prior art.”
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`29.
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`I understand that there are two ways in which prior art may render a
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`patent claim unpatentable. First, the prior art can be shown to “anticipate” the claim.
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`Second, the prior art can show that the claim was obvious to a person of ordinary
`
`skill in the field of the invention at the time the invention was made.
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`30.
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`I understand that, for a patent claim to be “anticipated” by the prior art,
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`each and every element or requirement of the claim must be found, expressly or
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`inherently, in a single prior art reference. Further, I understand that anticipation
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`requires that the single prior art reference must disclose the elements of the claim
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`arranged or combined in the same way as in the claim.
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`31.
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`It is my understanding that whether a claimed invention is obvious is a
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`question of law, with underlying factual inquiries that are determined from the
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`perspective of a person of ordinary skill in the art at the time of the claimed
`
`invention.
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`32.
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`It is my understanding that a claimed invention is obvious if the
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`differences between the claimed invention and the prior art are such that the claimed
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`invention as a whole would have been obvious before the effective filing date of the
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`claimed invention to a person having ordinary skill in the art (a “POSITA”).
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`33.
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`It is my understanding that obviousness requires consideration of the
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`following underlying factual inquiries:
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`• determining the scope and content of the prior art
`• ascertaining the differences between the claimed invention and the
`prior art;
`• resolving the level of ordinary skill in the art; and
`• evaluating objective evidence or “secondary considerations” of non-
`obviousness, such as commercial success, long-felt but unresolved
`needs, failure of others, industry praise, and unexpected results.
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`34.
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`It is my understanding that a reference must be analogous art to the
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`claimed invention in order to be properly considered for use in an obviousness
`
`inquiry. It is my understanding that a reference is analogous art to the claimed
`
`invention if:
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`• The reference is from the same field of endeavor as the claimed
`invention (even if it addresses a different problem); or
`• 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).
`It is my understanding that whether a reference is reasonably pertinent
`
`35.
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`turns on how the problem faced by the inventor is reflected, either explicitly or
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`implicitly, in the specification.
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`36.
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`It is my understanding that the following are exemplary rationales that
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`may support a conclusion of obviousness:
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`• Combining prior art elements according to known methods to yield
`predictable results;
`• Simple substitution of one known element for another to obtain
`predictable results;
`• Use of known techniques to improve a similar method or product in the
`same way;
`• Applying a known technique to a known method or product ready for
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`
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`improvement to yield predictable results;
`• Obvious to try – choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
`• 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; and
`• Some 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 prior art reference teachings to arrive at the claimed invention.
`
`
`
`37.
`
`In addition to the above, I understand that a person of ordinary skill in
`
`the art may resort to logic, judgment and common sense available to him or her at
`
`the time of the invention to find a claim feature obvious, even if the prior art relied
`
`on does not explicitly state or teach that feature. I understand that when common
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`sense is relied on to find a feature obvious, the reasoning for that conclusion must
`
`be articulated with sufficient clarity.
`
`38.
`
`I also understand that a patent claim is not proved obvious merely by
`
`demonstrating that each of its elements was, independently, known in the prior art.
`
`An obviousness determination requires finding both that a skilled artisan would have
`
`been motivated to combine the teachings of the prior art references to achieve the
`
`claimed invention, and that the skilled artisan would have had a reasonable
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`expectation of success in doing so. I understand that it is important to be careful not
`
`to allow hindsight reconstruction of references to produce the claimed invention,
`
`without any explanation as to how or why the references would be combined to
`
`produce the claimed invention.
`
`39. Regarding “objective evidence” or “secondary considerations,” I
`
`understand that for such evidence to be relevant to the obviousness of a claim, there
`
`must be a causal relationship (called a “nexus”) between the claim and the evidence.
`
`I also understand that such objective evidence may include: commercial success of
`
`products covered by the patent claims; long-felt need for the invention; failed
`
`attempts by others to solve the problem addressed by the invention; copying of the
`
`invention by others in the field; unexpected results achieved by the invention; praise
`
`of the invention; the taking of licenses under the patent by others; expressions of
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`surprise by experts and those skilled in the art at the making or use of the invention;
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`and that the patentee proceeded contrary to the accepted wisdom of the prior art.
`
`40.
`
`I understand that a person of ordinary skill is also a person of ordinary
`
`creativity. I further understand that the obviousness analysis need not seek out
`
`precise teachings directed to the specific subject matter of the challenged claim, but
`
`instead can take into account “ordinary innovation” that does no more than yield
`
`predictable results, which are inferences and creative steps that a person of ordinary
`
`skill in the art would be understood to employ.
`
`
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`41.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents and publications; the effects of demands known to the
`
`relevant field or present in the marketplace; and the background knowledge
`
`possessed by a person having ordinary skill in the art. I understand that all 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 at issue.
`
`B. Prior Art
`
`42.
`
`I understand that for purposes of this proceeding, prior art includes
`
`patents and printed publications in or outside the United States before the effective
`
`filing date of the claimed invention. I also understand that prior art includes U.S.
`
`patents, published U.S. patent applications, and published international applications
`
`(pursuant to the Pa