UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
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`PARROT S.A. and PARROT, INC.
`Petitioners
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`v.
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`DRONE TECHNOLOGIES, INC.
`Patent Owner
`____________
`
`Case IPR2014-00730
`Patent 7,584,071
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`____________
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`DECLARATION OF INVENTOR JAY SMITH, III
`IN CONNECTION WITH PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,584,071
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`CASE IPR2014-00730
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`1.
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`My name is Jay Smith, III. I am Chief Executive Officer of Symmpl,
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`Inc. and owner of Smith Engineering. I am also the inventor on over 40 U.S.
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`patents, including U.S. Patent No. 5,043,646 (“the Smith Patent” or “my Patent”).
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`I have been asked to explain what is, and is not, disclosed in my Patent in order to
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`assist the Patent Office. I am more than competent to do that. All statements made
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`of my own knowledge are true, and all statements made on information and belief
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`are believed to be true.
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`2.
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`My technical background is as follows. I hold a B.S. from Virginia
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`Polytechnic Institute and State University (Virginia Tech) in Applied Mechanics,
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`and an M.S. in Engineering Mechanics from the California Institute of Technology
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`(Cal Tech). I serve on the advisory board to the College of Engineering for
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`Virginia Tech, and am honored to have been named as one of 50 Distinguished
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`Engineering Alumni. I have attached a copy of my resume, Attachment A.
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`3.
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`For over 40 years, I have worked on a wide variety of inventions and
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`products, including toys and video games. For example, my U.S. Patent No.
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`5,043,646 describes a remote control transmitter/receiver system for use in
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`controlling a hobby vehicle, “without being concerned about the orientation of the
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`remote control transmitter . . .” Col. 3, lines 51-60.
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`4.
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`I understand that my Patent is being considered by the U.S. Patent
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`Office as prior art in connection with these proceedings. I have been asked to
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`describe what is and is not disclosed in my Patent. I believe that I can offer
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`valuable insights. I hope that my input will be helpful to the Patent Office in better
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`understanding what my Patent discloses, and what it does not disclose.
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`5.
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`I am being compensated at my typical rate of $200 per hour for
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`technical consulting, and $300 per hour if I am required to testify. My
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`compensation does not depend on what is contained in this declaration, any
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`testimony I might offer, or on the outcome of the proceeding before the U.S. Patent
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`Office.
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`6.
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`First, I will explain the problem that we set out to solve with the
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`invention disclosed in my Patent. Next, I will then explain how we solved the
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`problem through the invention disclosed in my Patent. Finally, I will explain some
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`aspects of our invention that I believe will provide the U.S. Patent Office with
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`useful perspective.
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`The problem we set out to solve.
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`7.
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`Remote-controlled model car systems typically include two main
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`components: a remote controller and a remotely controlled device, for example, a
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`car. The remote controller commonly includes what we referred to in my Patent as
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`“a user-operated means” (typically a joystick) for selecting a direction for the car
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`to travel. Col. 1, lines 22-28. Based upon the direction that the joystick was
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`pressed, the remote controller sends a direction control signal to the model car to
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`cause the car to move in the direction indicated by the joystick. Col. 1, lines 22-28.
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`A user can command a remote-controlled car to turn in a direction, such as “left”
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`or “right,” using the joystick, and the car responds accordingly.
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`8. While this seems like a simple task, it becomes more complicated
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`when considering real-world scenarios. For example, where the car is travelling
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`away from the user, moving the joystick to the left would send a “left” command
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`signal which would cause the car to turn left. In that situation, the command signal
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`and the resulting direction of the car will match. Col. 1, lines 49-56.
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`9.
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`In my Patent, we addressed the problem that arises, for example, when
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`the car is travelling toward the user. In that situation, if the user moves the joystick
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`to the left in order to send a “left turn” command signal, the car would not turn left
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`relative to the user, but rather would turn right. Col. 1, lines 57-64.
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`10. This problem becomes even more complicated when the user is not
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`stationary, and the car is moving, so that the position and direction of the car
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`relative to the user are constantly changing. Col. 1, lines 40-48. The result can be a
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`very unintuitive (and unintended) situation for the user of the remote-controlled
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`car.
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`The invention disclosed in the Smith Patent.
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`11. We solved this problem by providing a remote-control system that
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`was intuitive for the user. Specifically, we invented a system that was capable of
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`generating a “direction control signal” that contained direction control (i.e.,
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`heading information) relative to an external reference direction, specifically
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`magnetic North. Col. 2, lines 5-9. The invention allowed the user to send an
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`absolute direction command (i.e., the direction control signal) to the remote-
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`controlled car “without considering the orientation of the remote control
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`transmitter or the remotely controlled device relative to the external reference
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`direction.” Col. 1, lines 14-17.
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`12. To accomplish this, we used a flux gate compass in both the remote
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`controller and in the remote-controlled car. Col. 3, line 61 - col. 4, line 2 and
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`Figure 3 (remote controller); col. 5, lines 48-61 and Figure 4 (remote-controlled
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`car). A flux gate compass is basically an electronic compass which allowed us to
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`determine orientation around the vertical axis (commonly referred to as the “Z-
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`axis”) with respect to magnetic North.
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`13.
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`In my explanation here and in my Patent, I use the terms “orientation”
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`and “motion” to represent different and distinct ideas. To me, as someone skilled
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`in the art of designing control systems, “orientation” means the direction in which
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`an object is pointing at a particular point in time. For “motion,” an object must
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`change its position, its orientation, or both, over time. Orientation alone isn’t a
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`type of motion; it would require a change in orientation to be considered a form of
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`motion. Unlike “orientation,” which is a direction an object is pointing at a
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`particular point in time, “motion” requires a comparison of the positions and/or
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`orientations of the object at multiple points in time to determine if there has been a
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`change (indicating motion).
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`14.
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`In my Patent, we were only concerned with the orientation of the
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`joystick with respect to magnetic North in generating the direction control signal.
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`We accomplished this by determining the direction that the joystick is pressed with
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`respect to the remote controller and the instantaneous orientation of the remote
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`controller with respect to magnetic North. By adding these two values, we had the
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`heading (0 to 359 degrees) for the direction control signal. Col. 5, lines 14-31. We
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`did not retain or use the orientation of the remote controller after we sent the
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`direction control signal.
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`15.
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`The direction control signal utilized an external reference frame (i.e.,
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`with regards to magnetic North) by representing the direction that joystick was
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`pressed relative to magnetic North. Col. 5, lines 10-12. The remote controller also
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`included a switch that registered a “drive” signal that represented the user’s
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`command for the car to go either forward or backwards. Col. 5, lines 14-17. Those
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`two components (joystick orientation with respect to magnetic North, and drive)
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`make up the substantive portion of the command signal that is sent by the remote
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`controller to the remote-controlled car.1 Col. 5, lines 32-47 and Figure 5. The
`direction control signal is sent from the remote controller only when both the drive
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`switch and the joystick are activated simultaneously. Col. 5, lines 14-17 and col. 5,
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`lines 37-40.
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`16. By using this approach, our system generated a direction control
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`signal that represented the absolute direction, meaning the joystick orientation with
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`respect to magnetic North. The direction control signal sent to the remote-
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`controlled car did not contain any information about the orientation of the remote
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`controller, nor did we need it to. The direction control signal only contained the
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`heading indicated by the orientation of the joystick relative to magnetic North, as
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`shown in Figures 2a and 2b of my Patent (direction control signal “D”). If
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`someone would have analyzed the direction control signal that was sent from the
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`remote controller in my Patent, they would have found that there was no
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`information showing the orientation of the remote controller in the signal. They
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`would only know the direction that the joystick was pressed relative to magnetic
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`North (“D” in Figures 2a and 2b). As also shown in Figure 5 of my Patent, the
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`signal sent to the remote controlled car from the remote controller includes only a
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`sync byte, a byte regarding the commanded thrust, a byte on the commanded angle,
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`and a checksum byte. That signal contains no information about the orientation of
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`the remote controller.
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`17. The following example may help to illustrate this concept. Consider
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`two users – back to back – one facing due east and one facing due west. Each user
`wants his car to turn north. The user facing east would move his joystick to the left
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`(North). The user facing west would move his joystick to the right (also North).
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`The rest of the signal sent to the remote control car relates to checking the
`integrity of the signal which I do not believe is pertinent here.
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`The direction control signal sent from both remote controllers would be the same –
`namely, 0o (i.e., magnetic North). Even though the orientations of the users’
`remote controllers were directly opposite, under the invention disclosed in my
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`Patent, the exact same direction control signal would be sent by the remote
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`controllers to the remote-controlled cars because the orientations of the joysticks
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`relative to magnetic North would be the same.
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`18.
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`The system we disclosed in my Patent never provided the orientation
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`of the remote controller in any signal sent to the remote-controlled car. See Figure
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`5 of my Patent. That information was neither available, nor desired, to address the
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`problem that we solved. My Patent does not disclose (or even suggest) any signal
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`sent to the remote-controlled car that provides information about the remote
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`controller’s orientation.
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`19.
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`The car’s flux gate compass supplied the car’s microcontroller with
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`the car’s current heading with respect to magnetic North. Col. 5, lines 53-61.
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`Upon receipt of the direction control signal and the intended heading, the
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`microcontroller compared the car’s current heading (relative to magnetic North) to
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`the direction control signal heading to determine if the car needed to turn. If it did,
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`then the microcontroller would engage the steering control circuitry to turn to the
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`intended the heading. Col. 6, lines 5-11.
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`20. Using the invention disclosed in my Patent, a user could select a
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`desired heading (via the joystick) without knowing or even caring about how the
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`desired heading related to magnetic North. Col. 4, lines 10-17; col. 1, lines 12-17.
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`By using this absolute reference frame with respect to magnetic North, we were
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`able to provide an easy-to-use control system.
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`Attributes of the invention disclosed in the Smith Patent.
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`21. Our invention did not, at any point, detect the motion of either the
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`remote controller or the car, and my Patent does not disclose detecting any such
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`motion. The flux gate compass on the remote controller in my Patent determines
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`only the orientation (relative to magnetic North) of the remote controller around
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`the Z-axis. To determine changes in orientation of the remote controller, the
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`system would need to calculate a difference between the remote controller’s
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`orientation at different points in time. Nothing in my Patent discloses that. Other
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`than as I have previously described, we never made any such determinations, nor
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`saved them, for any purpose. We never contemplated determining changes in the
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`remote controller’s orientation, and such determinations were never part of our
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`invention or disclosed in my Patent. That information would not have been useful,
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`and including it in the direction control signal would have been counter to what we
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`accomplished with our invention. Since no information about motion was
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`measured, my Patent does not disclose a system where the difference between the
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`motion of the remote-controlled device and the motion of the remote controller is
`calculated or even considered.
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`22.
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`If I had wanted to determine changes in the remote controller’s
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`orientation, I would have needed to describe numerous additional steps (and more)
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`that are not disclosed in my Patent. These steps would include, for example,
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`determining and then retaining the orientation of the remote controller at one point
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`in time, and then comparing it to the orientation of the remote controller at another,
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`relevant point in time. We did not do that, and my Patent does not disclose that.
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`23.
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`I was asked to explain the phrase “a direction related feature” as we
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`used that phrase in my Patent, see col. 2, lines 38-46:
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`The present invention further includes a remotely controlled
`device that includes a third measuring means for measuring the
`orientation of the remotely controlled device relative to the
`external reference direction and a means for controlling a
`direction related feature of the remotely controlled device based
`upon a component signal output by the third measuring means
`and a control signal received from a remote control transmitting
`device.
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`24.
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`This excerpt discusses components of the remote-controlled car and
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`has nothing to do with the remote controller. The excerpt above refers to using a
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`flux gate compass in the remote-controlled car to determine the orientation of the
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`remote-controlled car with respect to magnetic North (“a third measuring means
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`for measuring the orientation of the remotely controlled device relative to the
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`external reference direction”), and a mechanism for controlling the direction that
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`the car travels (“a means for controlling a direction related feature of the remotely
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`controlled device”). The phrase “a direction related feature of the remote
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`controlled device” refers simply to the direction of wheels of the car that is
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`adjusted to steer the car, and not to any measurement of motion of either the
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`remote controller or the car.
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`25.
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`Finally, the invention described in my Patent does not generate a
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`signal that represents information about the remote controller’s motion in 3D
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`space. As I explained above, the invention disclosed in my Patent does not
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`measure motion of any component of the system. Further, the direction control
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`signal sent from the remote controller contains no information about the orientation
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`of the remote controller, let alone information about the remote controller’s
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`motion. We used the remote controller’s flux gate compass to determine the
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`orientation of the remote controller about one axis, the Z-axis, at one point in time.
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`The invention in my Patent cannot determine orientation (or changes in
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`orientation) about the X—axis or the Y—aXis.
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`26.
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`The invention disclosed in my Patent cannot generate a signal that
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`represents information about the remote controller’s motion in 3D space because it
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`does not determine motion and because it is limited to determining orientation
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`around only one axis (the Z—axis), and only at a single point in time.
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`27.
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`I hope that this explanation will be helpful in understanding What is,
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`and is not disclosed, in my Patent.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed this LL day of February, 2015, in Los Angeles, California.
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`Jay Smith, 111
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