UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APEX TOOL GROUP, LLC,
`Petitioner,
`
`v.
`
`MILWAUKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`
`________________
`
`Case No. PGR2020-00056
`Patent 10,422,617
`________________
`
`__________________________________________________________
`
`DECLARATION OF DR. KIMBERLY K. CAMERON
`
`Milwaukee Electric Tool Corporation – Exhibit 2001
`Apex Tool Group, LLC v. Milwaukee Electric Tool Corporation
`PGR2020-00056 U.S. Patent No. 10,422,617
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APEX TOOL GROUP, LLC,
`Petitioner,
`
`v.
`
`MILWAUKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`
`________________
`
`Case No. PGR2020-00056
`Patent 10,422,617
`________________
`
`__________________________________________________________
`
`DECLARATION OF DR. KIMBERLY K. CAMERON
`
`Milwaukee Electric Tool Corporation – Exhibit 2001
`Apex Tool Group, LLC v. Milwaukee Electric Tool Corporation
`PGR2020-00056 U.S. Patent No. 10,422,617
`
`
`
`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`VII.
`
`ENGAGEMENT ........................................................................................ 1
`
`BACKGROUND ....................................................................................... 2
`
`A. My Academic Education as a Mechanical Engineer ........................... 2
`
`B. My Engineering Career and Relevant Engineering Project
`Examples .............................................................................................. 2
`
`MATERIALS REVIEWED ....................................................................... 5
`
`A PERSON OF ORDINARY SKILL IN THE ART ................................. 5
`
`OVERVIEW OF THE ’617 PATENT AND ITS PROSECUTION
`HISTORY .................................................................................................. 6
`
`A. Overview of the ’617 Patent ................................................................ 6
`
`B. Prosecution History of the ’617 Patent .............................................. 14
`
`MY OPINIONS AS TO FIGURE 6 OF THE ’617 PATENT ................. 14
`
`MY OPINIONS AS TO THE MURRAY REFERENCE (EX. 1010) ..... 24
`
`VIII.
`
`CONCLUSION ........................................................................................ 32
`
`ii
`
`
`
`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
`
`I, Dr. Kimberly K. Cameron, hereby declare as follows:
`
`I.
`
`ENGAGEMENT
`
`1.
`
`I have been retained by Milwaukee Electric Tool Corporation (“Patent
`
`Owner”) in connection with a post-grant review (PGR) petition that was filed
`
`challenging the validity of claims 1-11 of U.S. Patent No. 10,422,617 (the “’617
`
`patent”). I understand that the PGR petition at issue here was filed by Apex Tool
`
`Group, LLC (“Petitioner”). I also understand that the ’617 patent is assigned to
`
`Patent Owner.
`
`2.
`
`I have been asked by Patent Owner at this stage to offer opinions
`
`concerning Figure 6 in the ’617 patent and concerning Petitioner’s proposal to
`
`modify U.S. Patent No. 6,324,769 to Murray (Ex. 1010) in challenging the claims
`
`of the ’617 patent. This declaration sets forth the opinions I have reached to date
`
`regarding these matters.
`
`3.
`
`I am being compensated by Patent Owner at my standard hourly
`
`consulting rate of $410 for my time spent on this matter. My compensation is not
`
`contingent on the outcome of the PGR or on the substance of my opinions.
`
`4.
`
`I have no financial interest in Petitioner or Patent Owner.
`
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`II. BACKGROUND
`
`5.
`
`As I have summarized below, my academic education and engineering
`
`career have prepared me well to testify on matters related to the ’617 patent.
`
`A. My Academic Education as a Mechanical Engineer
`
`6.
`
`I earned a B.S.E. degree in Mechanical Engineering in 1999 from
`
`Princeton University with certificates in Applied Mathematics, Engineering
`
`Physics and Materials Science. I then earned my M.S. degree in Mechanical
`
`Engineering in 2000 from Stanford University. I also earned my Ph.D. degree in
`
`Mechanical Engineering from Stanford University in 2004 with a minor in
`
`Materials Science.
`
`B. My Engineering Career and Relevant Engineering Project
`Examples
`
`7.
`
`I am a Principal for Engineering Systems Inc. (ESi) in the Mechanics
`
`and Materials practice. ESi is an engineering and scientific investigation and
`
`analysis firm committed to providing clear answers to the most challenging
`
`technical problem. At ESi, I specialize in mechanical engineering and metallurgy
`
`and have extensive experience with mechanical design, stress analysis, failure
`
`analysis, and risk assessments of engineering structures and components.
`
`8.
`
`I have conducted hundreds of investigations on a wide variety of
`
`engineering structures, from miniature biomedical devices to large-scale process
`
`
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`equipment. I have also consulted on the design and manufacturability of various
`
`mechanical devices with actuators. The common thread in each of my
`
`investigations is the application of the fundamentals of engineering mechanics,
`
`metallurgy, materials science, engineering physics, and computational mathematics
`
`to help understand and solve complex problems.
`
`9.
`
`Examples of hand tools and other similar mechanical technologies
`
`that I have worked on during my engineering career include: gears, bearings,
`
`clamps, saws, many different types of surgical tools, many different kinds of
`
`fasteners, tension meters, power-driver screwdrivers, measuring devices using
`
`gyroscopes, utility knives, staplers, safety glasses, and many others. In
`
`successfully designing these various tools, I dealt with and resolved numerous
`
`engineering challenges, including manufacturing issues, issues related to the
`
`mechanics of materials, stress analysis issues, issues related to ergonomics, issues
`
`related to mechanical vibrations, and other human factors generally relevant to the
`
`design and end-consumer use of these tools.
`
`10.
`
`I have also taught classes for engineers preparing to take the
`
`Fundamentals of Engineering exam and the Professional Engineering licensing
`
`examination in both Civil Engineering and Mechanical Engineering.
`
`
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`Page 3
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`
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`
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`11. My academic engineering training and professional/industry
`
`engineering experiences involved significant studies and first-hand experience in
`
`mechanical engineering.
`
`12. Additional information regarding my background, qualifications,
`
`publications, and presentations is included as part of my curriculum vitae (“CV”),
`
`which is included in Exhibit 2009.
`
`13. Based on my technical experience in the field of mechanical
`
`engineering, including that summarized above and described in greater detail in my
`
`curriculum vitae, I consider myself to be an expert in the design, development, and
`
`testing of hand tools, of which a tape measure is one example.
`
`14. While I am not an expert in patent law, I am a registered patent agent,
`
`with experience in both the patent application process, as well as intellectual
`
`property disputes. As one example of my relevant testifying experiences, I worked
`
`on a patent case related to fishing reel designs. I also have experience in
`
`biomedical, automotive, electrical, mechanical, and materials science fields, and
`
`have provided numerous invalidity and infringement reports as identified in Ex.
`
`2010, which lists my testifying experiences from the last five years.
`
`
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`III. MATERIALS REVIEWED
`
`15.
`
`In forming my opinions, I have reviewed the ʼ617 Patent (Ex. 1001)
`
`and its prosecution history (Ex. 1007), the Murray reference (Ex. 1010), and
`
`certain sections of the report provided by Petitioner’s expert witness, Dr. Glenn E.
`
`Vallee. In particular, I reviewed sections I-VII, IX, and X.F-H of Dr. Vallee’s
`
`report in Ex. 1017. In reaching my opinions, I have relied upon my experience in
`
`the field, and also considered the viewpoint of a person of ordinary skill in the art
`
`at the time of the August 24, 2017 earliest priority date (the “Priority Date”) of the
`
`’617 patent. I am familiar with the level of skill of a person of ordinary skill in the
`
`art regarding the relevant technology at issue as of that time.
`
`IV. A PERSON OF ORDINARY SKILL IN THE ART
`
`16. At this stage, I have applied the definition of the level of ordinary skill
`
`in the art provided at paragraphs 14-15 of Dr. Vallee’s declaration in Ex. 2017, as I
`
`understand that Patent Owner has declined to contest that definition at this early
`
`stage in the PGR.
`
`17. All of the opinions that I offer below are provided from the
`
`perspective of a person having ordinary skill in the art (“PHOSITA”) with the level
`
`of ordinary skill identified above. Based on my academic engineering experiences
`
`
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`Page 5
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`and industry engineering experiences (provided above), I am very familiar with
`
`such a PHOSITA as of the Priority Date.
`
`V. OVERVIEW OF THE ’617 PATENT AND ITS PROSECUTION
`HISTORY
`
`18. For context, a brief overview of the ’617 patent is provided below.
`
`A. Overview of the ’617 Patent
`
`19. The ’617 patent is generally directed to tape measures, an example of
`
`which is shown in Figure 1:
`
`Ex. 1001, Figure 1.
`
`
`
`
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`20. As Figure 1 shows and the ’617 patent explains, the tape measure 10
`
`shown in Figure 1 includes a “tape blade 14” that is “an elongate strip of material
`
`including a plurality of graduated measurement markings, and in specific
`
`embodiments, tape blade 14 is an elongate strip of metal material (e.g., steel
`
`material) that includes an outer most end coupled to a hook assembly, shown as
`
`hook assembly 26.” Ex. 1001, 5:20-31.
`
`21. Figure 3 also provides additional details concerning construction of
`
`the tape blade 14. As Figure 3 (reproduced below) shows, the “tape blade 14
`
`includes an upper 40 coating layer 112 coupled to (e.g., attached, bonded, glued,
`
`etc.) the concave upper surface of inner metal layer 110 and a lower coating layer
`
`114 coupled to (e.g., attached, bonded, glued, etc.) the convex lower surface of
`
`inner metal layer 110.” Ex. 1001, 6:39-44.
`
`
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`Page 7
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`
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`Ex. 1001, Figure 3. In other words, the tape blade 14 has a concave upper surface
`
`112 and a convex lower surface 114, and these surfaces are separated by an inner
`
`metal layer 110. The concave upper surface and convex lower surface are apparent
`
`in the figures of the ’617 patent, including in Figure 14, which is introduced as “an
`
`exemplary tape blade profile,” and that profile of Figure 14 is generally U-shaped
`
`as is shown below:
`
`
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`Page 8
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`Ex. 1001, Figure 14. Figure 14 labels a “total width,” which is also referred to as a
`
`“curved width” in the ’617 patent, as well as a “total height,” which is also referred
`
`to as a “curved height” in the ’617 patent. The ’617 patent also explains that the
`
`tape blade has a “flat width,” which “is the width of the tape blade prior to forming
`
`to a curved shape.” Ex. 1001, 15:46-47.
`
`22. The ’617 patent identifies tape measure blade profiles resulting in
`
`improved performance, including improved standout distances for such tape blades
`
`
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`Page 9
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`14, which can be achieved by determining appropriate values for the curved width
`
`and curved height (for a given flat width of the tape blade 14), while also
`
`maintaining certain ratios between these values. I will discuss this more in a
`
`moment, but would first like to point out that the patent describes standout distance
`
`as “the maximum length, L1, of tape blade 14 that can be extended from tape
`
`housing 18 when the tape housing 18 is positioned such that the tape blade exits
`
`the housing in a direction perpendicular to gravity while self-supporting its own
`
`weight without buckling and without additional support being provided other than
`
`what the tape measure housing itself provides (e.g., without the tape blade being
`
`supported by the user’s hand).” Ex. 1001, 7:55-63; see also Ex. 1001, Figure 4
`
`(reproduced below).
`
`
`
`
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`Page 10
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`23.
`
`In my opinion, Petitioner and its expert Dr. Vallee oversimplify the
`
`engineering challenges necessary to create a tape measure with improved standout
`
`distances without also (i) altering retraction torque requirements, (ii) negatively
`
`impacting readability of the measurement indications on the blade, and/or (iii)
`
`using expensive or exotic materials. The ’617 patent explains that it worked against
`
`“conventional wisdom” by achieving tape blade profiles that “provide a
`
`combination of increased standout[,] lower retraction torque and/or increased
`
`readability, while maintaining a relatively low thickness tape blade.” Ex. 1001, 5:9;
`
`see also Ex. 1001, 15:3:9 (reiterating that the ’617 patent worked “in contrast to
`
`this conventional wisdom” and “unexpectedly discovered a variety of tape blade
`
`widths and curvatures that provide for increased standout (for a tape blade of a
`
`given thickness) without substantially altering the increasing torque that needs to
`
`be delivered by the retraction system to rewind the spring.”).
`
`24. The data in the ’617 patent illustrates how Patent Owner was able to
`
`achieve these results. For example, Table 1 compares Patent Owner’s innovative
`
`designs A, B, and C (data highlighted in yellow below) to existing tape measure
`
`
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`Page 11
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`designs, which are identified in the last three rows of Table 1 (data highlighted in
`
`purple below).1
`
`
`
`
`1 Table 1 also includes Patent Owner’s tape measures that were commercially
`
`available at that time. Because those tape measures do not meet many of the claim
`
`limitations of the challenged claims and are not relied on as prior art by Dr. Vallee
`
`or Petitioner, I have not discussed these in detail in my declaration.
`
`
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`Page 12
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`25. Patent Owner’s new designs (i.e., A-C) have blades with a narrower
`
`flat width and thinner steel thickness than the prior art designs in Table 1, yet
`
`utilize the inventive tape blade profile designs described in the ’617 patent to
`
`achieve increased standout distances and decreased droop as compared to existing
`
`tape measure designs. This is contrary to the conventional wisdom of a PHOSITA
`
`at the time because it was then believed that bigger tape blades (i.e., wider flat
`
`width and greater thickness) were necessary to decrease droop and increase
`
`standout.
`
`26. Patent Owner’s new designs do not follow this conventional wisdom.
`
`They have smaller blades than the competitor prior art designs in Table 1 (i.e., flat
`
`width of 30 mm compared to 31.75 mm, and a thickness of 0.11 mm compared to
`
`0.13 mm), yet they have less droop (i.e., about 20-25 inches compared to 28-33
`
`inches) and more standout (i.e., about 156-164 inches compared to 138-149
`
`inches).
`
`27. The ’617 patent also identified the blade-dimension ratios that should
`
`be maintained to achieve these advantageous results, including (i) a ratio of curved
`
`height to flat width, (ii) a ratio of curved height to steel thickness, (iii) a ratio of
`
`curved width to flat width, and (iv) a ratio of blade angle to flat width. See, e.g.,
`
`Ex. 1001, Table 2 (13:34-60). The innovations of the ’617 patent are reflected in its
`
`
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`Page 13
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`
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`claims. The claims recite appropriate blade dimensions and ratios between these
`
`dimensions (i.e., ratio of curved width to flat width and ratio of curved height to
`
`flat width). Ex. 1001, claim 1; see also Ex. 1001, claims 2-3 and 10 (also reciting
`
`ratio of curved height to steel thickness T1). Patent Owner’s careful balance of
`
`determining the right blade dimensions (e.g., to keep material costs down and to
`
`reduce the size the tape measure) while also maintaining necessary ratios between
`
`these dimensions, allowed Patent Owner in my opinion to create a new tape
`
`measure with less droop and more standout.
`
`B.
`
`Prosecution History of the ’617 Patent
`
`28.
`
`I understand that, after the patent examiner considered the materials
`
`provided by Patent Owner and those identified based on the patent examiner’s own
`
`searching efforts, the application that led to the ’617 Patent received a first-action
`
`allowance. See generally Ex. 1007, 3-4 (patent examiner’s consideration of
`
`references cited by Patent Owner), 24-25 (patent examiner’s identification of other
`
`references cited and considered based on the examiner’s searching efforts), 16-23
`
`(notice of allowance).
`
`VI. MY OPINIONS AS TO FIGURE 6 OF THE ’617 PATENT
`
`29. As I noted earlier in this declaration, I have been asked by Patent
`
`Owner to provide an explanation as to the illustration shown in the ’617 patent’s
`
`
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`Page 14
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`
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`Figure 6. My opinions as to Figure 6, which I believe Petitioner and its expert Dr.
`
`Vallee have misunderstood by ignoring its exaggerated nature, are provided below.
`
`30. Figure 6 is introduced in the ’617 patent as “a cross-sectional view
`
`showing the profile of a tape blade” (Ex. 1001, 3:63-64), and the ’617 patent also
`
`explains that in “FIG. 6 the relative position between the central section 122 of
`
`profile 120 and the widthwise outer sections 124 of profile 120 is exaggerated to
`
`better demonstrate the shape of profile 120” (Ex. 1001, 10:63-66). Figure 6 is
`
`reproduced below in its original form:
`
`
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`Page 15
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`31. Dr. Vallee incorrectly believes that Figure 6 shows “convex portions,”
`
`which he adds to Figure 6 as is shown below:
`
`
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`Page 16
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`Ex. 1017, ¶ 66 (Figure 6 of patent with red annotations added by Petitioner).
`
`32. As I previously quoted above, the ’617 patent is clear that Figure 6 is
`
`an exaggerated view of the profile of a blade, not a depiction of the actual curved
`
`profile of a blade. Figure 6’s exaggerated view is used in the ’617 patent to depict
`
`what is referred to as a compound curvature with more than one concave curve
`
`(i.e., at least one curve in the middle with a small radius and at least one other
`
`curve formed at the edges with a larger radius). In particular, the specification
`
`explains that in Figure 6 “the relative position between the central section 122 of
`
`profile 120 and the widthwise outer sections 124 of profile 120 is exaggerated to
`
`better demonstrate the shape of profile 120,” and then states that “profile 120 is not
`
`Page 17
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`a continuous curve.” Ex. 1001, 10:63-66. The specification also explains that “the
`
`upper surfaces of outer sections 124 have a greater radius of curvature than central
`
`section 122.” Ex. 1001, 11:1-2.
`
`33. As such, Figure 6 uses an exaggeration of the blade profile to show
`
`that this blade comprises multiple concave curves, each with a different radius,
`
`along the upper surface. The ’617 patent never describes any curve of the upper
`
`surface of Figure 6 as a convex curve. Thus, in my view, Figure 6 confirms that the
`
`entire curved profile 120 can be formed of multiple concave curves (i.e., a
`
`compound curve) as opposed to a single continuous concave curve (i.e., a simple
`
`curve).
`
`34.
`
`In addition to Figure 6, the specification also includes a number of
`
`other figures that rebut Dr. Vallee’s position that Figure 6 depicts a blade having
`
`an upper surface that is both concave and convex. Figure 5 depicts the same
`
`curved profile 120 as Figure 6, but Figure 5 depicts the actual shape of the curved
`
`profile and does not exaggerate that shape as was done in Figure 6. These two
`
`figures are repoduced below.
`
`
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`Page 18
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`Ex. 1001, Figures 5-6. To me, Figure 5 provides clear confirmation that the upper
`
`surface of the curved profile 120 of the elongate blade forms a concave upper
`
`surface with no convex curves.
`
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`35. Other figures in the patent provide similar confirmation of this fact.
`
`See, e.g., Figure 14 (below).
`
`
`
`Ex. 1001, Figure 14; see also Ex. 1001, 4:18-19 (describing Figure 14 as showing
`
`“an exemplary tape blade profile labeling the various dimensions listed in Table
`
`3.”). Similar to Figures 5 and 6, Figure 14 also depicts two edge areas and a center
`
`curvature area. Unlike Figure 6, Figure 14 does not exaggerate the junction
`
`between these areas. As such, Figure 14 further confirms that there is no convex
`
`curve on the upper surface of the elongate blade.
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`36. Figure 14 does not stand alone, as many other figures in the ’617
`
`patent also depict the blade curvatures for the inventive tape blade profiles of
`
`Patent Owner’s prototype designs A, B, and/or C (from Table 1), and all of these
`
`other figures consistently show that there is no convex curve on the upper surface
`
`of the elongate blade.
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`Page 21
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`Page 22
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`Page 23
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`Ex. 1001, Figures 7, 9, 10, 11, and 12.
`
`37.
`
`In short, Dr. Vallee has misinterpreted Figure 6. Once the exaggerated
`
`nature of Figure 6 is recognized and understood, Dr. Vallee’s mistake is clear. The
`
`’617 patent’s other figures and descriptions in the specification confirm that the
`
`curved profile of the entire elongate blade refers to the upper (or lower) surface
`
`being concave (or convex).
`
`VII. MY OPINIONS AS TO THE MURRAY REFERENCE (EX. 1010)
`
`38. As I noted earlier in this declaration, I have also been asked by Patent
`
`Owner to review Dr. Vallee’s positions concerning the Murray reference. As I
`
`explain below, I find that Murray discourages and teaches away from the
`
`modification to Murray that Dr. Vallee offers.
`
`39.
`
`It is Dr. Vallee’s position that the most preferred/preferable
`
`embodiment in Murray would have been modified based on routine optimizations,
`
`a position with which I disagree. In particular, Dr. Vallee identifies the most
`
`preferred embodiment of Murray as having a curved width of 25.86 mm (Ex. 1017,
`
`¶ 159), a curved height of 8.13 mm (Ex. 1017, ¶ 162), and a flat width of 31.75
`
`mm (Ex. 1017, ¶ 162). Of course, this curved width of 25.86 mm is well outside of
`
`the curved width between 20 and 23 mm that is recited in claim 1. Accordingly,
`
`Dr. Vallee has to propose that a PHOSITA “would have experimented with
`
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`Page 24
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`increasing the curvature disclosed in Murray” by “increasing the curved height to
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`0.4 inches” (Ex. 1017, ¶ 160) and also that such a modified Murray blade would
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`have then had a curved width of 23 mm.2
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`40. Thus, Dr. Vallee argues that it would have been a routine optimization
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`to change Murray’s blade from a curved width of 25.86 mm to a curved width of
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`23 mm and from a curved height of 8.13 mm to a curved height of 10.16 mm (this
`
`is .4 inches converted to mm), all while keeping the flat width at a constant 31.75
`
`mm. Stated simply, Dr. Vallee’s position is that it would have been routine to make
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`Murray’s blade taller and narrower.
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`41. That position is directly contradicted by the teachings in Murray,
`
`which both discourages a PHOSITA from changing Murray’s most preferred
`
`
`2 Dr. Vallee’s proposed modified curved width is listed in paragraph 163 of his
`
`declaration when he alleges that his modification to Murray’s most preferred
`
`embodiment would have resulted in a ratio of the curved width to the flat width
`
`that meets the relevant limitation of claim 1. Ex. 1017, 163 (Dr. Vallee arguing
`
`that “the ratio of curved width to flat width would be 0.72 (23 mm
`
`divided by 31.75 mm), which is less than 0.8.”).
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`Page 25
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`embodiment to have a taller and narrower blade, and also leads a PHOSITA in a
`
`path divergent from the claimed invention.
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`42. Murray specifically teaches only allowing “the blade height H to be
`
`increased without increasing the overall blade curvature to a degree that would
`
`make reading the gradations and lettering printed on the concave surface of the
`
`blade 16 difficult.” Ex. 1010, 7:45-50. Murray identifies the tape measure
`
`dimensions for its most preferred embodiment that satisfy this readability
`
`requirement (identified above), and they do not meet the limitations in the
`
`challenged claims. Dr. Vallee’s theory that a PHOSITA would have been
`
`motivated to increase the degree of curvature by making the blade taller and
`
`narrower is contrary to Murray’s express teaching of avoiding the narrowing of the
`
`blade in a way that would impair its readability.
`
`43. As a helpful example to understand the readability principles
`
`explained in Murray, I have prepared two figures below. The top figure (Cameron
`
`Figure 1A) shows a relatively wider and shorter blade (like Murray’s most
`
`preferred embodiment, and the bottom figure (Cameron Figure 1B) shows a
`
`comparatively narrower and taller blade (like the modification to Murray’s most
`
`preferred embodiment advanced by Dr. Vallee).
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`Page 26
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`Dr. Cameron Figure 1A (relatively wider and shorter blade is more readable).
`
`
`
`
`
`Dr. Cameron Figure 1B (comparatively narrower and taller blade is less readable).
`
`
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`Page 27
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`44. As the above figures show graphically, a taller and narrower blade
`
`results in a less readable blade, which is exactly the principle that Murray taught a
`
`PHOSITA to avoid, as was explained above.
`
`45. Murray goes even further by disparaging blades that are “very
`
`difficult to read” as “not commercially practical.” Ex. 1010, 7:52-54. Murray also
`
`observes the desirability of “[i]ncreasing the blade width” to allow for “the
`
`printing on the blade to be made larger, thus making measurements easier by
`
`making the blade easier to read.” Ex. 1010, 7:55-58. Thus, Dr. Vallee’s assertions
`
`that narrowing Murray’s curved width would have been a matter of routine
`
`optimization are directly undermined by Murray’s express disclosures instructing a
`
`PHOSITA not to do the very thing that Petitioner and Dr. Vallee advance.
`
`46.
`
`It is also illuminating to me that the ’617 patent’s Table 1 includes
`
`data that aligns with Murray’s criticisms of making a tape measure blade too tall
`
`and narrow (i.e., increasing curved height and decreasing curved width, as
`
`proposed by Dr. Vallee). As reproduced below, for tape measure blades with a flat
`
`width of 31.75 mm (like Murray’s) (highlighted in purple below), none of those
`
`blades included a curved height above 9.1835 (highlighted in blue below) or a
`
`curved width below 23.601 (highlighted in yellow below).
`
`
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`Page 28
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`Ex. 1001, Table 1. This data contrasts with Petitioner’s assertions of “routine
`
`optimizations” to make a tape measure blade with a taller curved height of 10.14
`
`mm (0.4 inches) and with a narrower curved width of 23 mm. This is summarized
`
`in the table below for ease of reference:
`
`
`
`Petitioner’s Proposed
`Modification to Murray
`
`Flat Width
`(mm)
`
`Curved Width
`(mm)
`
`Curved Height
`(mm)
`
`31.75
`
`23
`
`10.14
`
`
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`Page 29
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`
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`
`
`
`
`Murray’s Most Preferred
`Embodiment
`
`Prior Art Tape No. 1 of the
`Patent’s Table 1
`
`Prior Art Tape No. 2 of the
`Patent’s Table 1
`
`Prior Art Tape No. 3 of the
`Patent’s Table 1
`
`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`Flat Width
`(mm)
`
`Curved Width
`(mm)
`
`Curved Height
`(mm)
`
`31.75
`
`25.86
`
`8.13
`
`31.75
`
`23.651
`
`9.1835
`
`31.75
`
`23.601
`
`9.166
`
`31.75
`
`26.05
`
`7.9675
`
`47.
`
`In sum, my opinion is that Dr. Vallee’s proposed modification of
`
`Murray results in a blade that has a narrower curved width and a taller curved
`
`height than any of the other competitors’ commercially available products in Table
`
`1 of the ’617 patent. In other words, Murray’s warning that the taller and narrower
`
`tape measure blades were known to be “very difficult to read,” and thus are “not
`
`commercially practical” (Ex. 1010, 7:52-54), is consistent with the data in Table 1.
`
`48.
`
`In sum, Petitioner’s proposed modification would undermine
`
`Murray’s intended purpose to improve readability, and a PHOSITA therefore
`
`would not have been motivated to modify Murray in the way proposed by Dr.
`
`Vallee.
`
`49. Additionally, a PHOSITA would not have been motivated to narrow
`
`the curvature of Murray’s tape measure blade while keeping the flat width
`
`
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`Page 30
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`constant,3 because Murray expressly instructs that the resulting product would not
`
`be commercially practical.
`
`50. For at least these reasons, it is my opinion that Dr. Vallee’s assertion
`
`of a “routine optimization” to increase the curvature of Murray’s blade is directly
`
`contradicted by Murray.
`
`
`
`
`
`
`3 Assertions of increasing flat width would have created additional problems for
`
`Petitioner. As an example, Murray mentions that it is “within the scope of the
`
`present invention to provide a blade width of 1.5 inches or greater” (Ex. 1010,
`
`7:42-44), but, importantly, 1.5 inches is 38.11 mm, which is well outside of the
`
`claimed flat width range of 29 mm to 32 mm recited in limitation 1[g].
`
`
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`Page 31
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`
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`Declaration of Dr. Kimberly K. Cameron
`U.S. Patent No. 10,422,617
`PGR2020-00056
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`VIII. CONCLUSION
`
`51. For the reasons set forth above, in my opinion, Petitioner and its
`
`expert Dr. Vallee have misinterpreted Figure 6 of the ’617 patent, which does not
`
`show a convex curve on the upper surface of the elongate blade. Additionally,
`
`Murray teaches away from the modification that Petitioner and its expert Dr.
`
`Vallee propose making to Murray’s tape measure blade.
`
`52.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States Code
`
`and that such willful false statements may jeopardize the results of these
`
`proceedings.
`
`Executed on July 15th, 2020 in Palo Alto, California.
`
`______________________________
`
`
`
`
`
` Kimberly K. Cameron, Ph.D.
`
`
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`
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`Page 32
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