UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`
`PARROT S.A. and PARROT, INC.
`Petitioners
`v.
`DRONE TECHNOLOGIES, INC.
`Patent Owner
`____________
`
`Case IPR2014-00730
`Patent 7,584,071
`____________
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,584,071
`CASE IPR2014-00730
`
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`
`TABLE OF CONTENTS
`
`
`I. SMITH DOES NOT ANTICIPATE THE CLAIMS ............................................. 3
`A. Smith Does Not “Determine Changes In Orientation” ................................ 5
`B. Smith Does Not Consider the “Difference of Motion Between The
`Remote-Controlled Device and The Remote Controller” ........................... 9
`C. Smith Does Not Sense the Remote Controller’s Terrestrial Magnetism in
`the X-, Y-, and Z-Axes .............................................................................. 12
`D. Petitioners Urge An Unreasonable Interpretation of Claim 13 In Order To
`Argue For Anticipation .............................................................................. 14
` NEITHER BATHICHE NOR SHKOLNIKOV IS ANALOGOUS ART ........ 18
`II.
`III. PETITIONERS’ DECLARANT’S TESTIMONY SHOULD BE GIVEN
`LITTLE OR NO WEIGHT .............................................................................. 21
`IV. CONCLUSION ................................................................................................ 23
`V. CERTIFICATE OF SERVICE ......................................................................... 24
`
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`2 
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`

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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`
`EXHIBIT LIST
`
`Description
`
`2002
`
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
` 
`
` 
` 
`
`3 
`
`Date Filed
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`
`
`
`2/9/2015
`5/6/2014
`2/9/2015
`2/9/2015
`2/9/2015
`Not filed
`
`Not filed
`
`Exhibit No.
`U.S. Patent 7,584,071
`1001
`U.S. Patent 5,043,646 (“Smith”)
`1002
`French Patent No. 2789765
`1003
`Certified Translation of French Patent No. 2789765
`1004
`U.S. Patent No. 7,219,861 (“Barr”)
`1005
`U.S. Patent No. 6,751,529 (“Fouche”)
`1006
`U.S. Publication No. 2006/0144994 (“Spirov”)
`1007
`U.S. Patent No. 7,145,551 (“Bathiche”)
`1008
`U.S. Publication No. 2004/263479 (“Shkolnikov”)
`1009
`Declaration of Raffaello D’Andrea (Attachments A-C)
`1010
`U.S. Patent No. 613,809 (“Tesla”)
`1010, Att. A
`U.S. Patent No. 3,101,569 (“Giardina”)
`1010, Att. B
`U.S. Patent No. 8,072,417 (“Jouanet”)
`1010, Att. C
`1010 (corrected) Corrected Declaration of Dr. Raffaello D’Andrea
`1011
`Claim Chart
`1012
`Declaration of Deborah Skolaski
`1013
`Declaration of James Hopenfeld
`1014
`Declaration of Dr. Raffaello D’Andrea
`2001
`D’Andrea Deposition Exhibit – Declaration Signature Page,
`‘071
`D’Andrea Deposition Exhibit – Appendix A, Materials
`Considered by Dr. Raffaello D’Andrea
`Not filed
`D’Andrea Deposition Exhibit – Smith Patent
`Not filed
`D’Andrea Deposition Exhibit – Potiron Patent, French
`Not filed
`D’Andrea Deposition Exhibit – Translations Certification
`Not filed
`D’Andrea Deposition Exhibit – Declaration, ‘071
`Not filed
`D’Andrea Deposition Exhibit – Lee Patent, ‘071
`Not filed
`D’Andrea Deposition Exhibit – Bathiche Patent
`Not filed
`D’Andrea Deposition Exhibit – Declaration, ‘748
`D’Andrea Deposition Exhibit – Parrot Exhibits 1011 and 1010 Not filed
`D’Andrea Deposition Exhibit – Lee Patent, ‘748
`Not filed
`Transcript of Dr. Raffaello D’Andrea Deposition
`2/11/2015
`Declaration of Robert Sturges
`2/11/2015
`Declaration of Jay Smith, III
`2/11/2015
`Definition for term “motion”
`2/11/2015
`
`

`

`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`I.
`SMITH DOES NOT ANTICIPATE THE CLAIMS
`
`Smith does not anticipate claims 1-5 and 10-14 of the ‘071 Patent for at
`
`least three important reasons:
`
`1.
`
`No “determining a change in orientation”. Petitioners persuaded
`
`this Honorable Board that, under the broadest reasonable interpretation,
`
`“determining a change in orientation” is within the scope of the claimed
`
`“detect[ing] the remote controller’s motion.” Paper No. 8 at 7. Smith
`
`determines orientation but, significantly, Smith does not disclose “determining
`
`a change in orientation.” As a result, Smith cannot disclose “detect[ing] the
`
`remote controller’s motion” under the operative construction. No less of an
`
`authority than Smith himself explains. See Ex. 2014 (Smith Decl.), ¶¶ 14, 16,
`
`21-22.
`
`2.
`
`No “difference of motion”. Claim 4 of the ‘071 Patent requires
`
`using (i) the signal sent by the remote controller, and (ii) the remote-controlled
`
`device’s terrestrial magnetism sensing signal to get the “difference of motion
`
`between the remote-controlled device and the remote controller.” Ex. 1001,
`
`col. 8, ll. 34-40. This Honorable Board construed “difference of motion” to
`
`mean “relative motion.” Paper No. 8 at 10. Smith, however, does not (indeed
`
`cannot) disclose “relative motion” because the signal sent by the remote
`
`controller in Smith contains no information about the remote controller’s
`
` 
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`4 
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`motion. The signal sent by the remote controller in Smith, therefore, could not
`
`(even if Smith wanted to) be used to get the “relative motion” as required by
`
`claim 4. See Ex. 2014 (Smith Decl.), ¶ 21.
`
`3.
`
`No detection in the X-, Y-, and Z-axes. At page 8 of the
`
`Institution Decision, this Honorable Board quoted a section of the ‘071 Patent
`
`specification that explains, inter alia, “[t]he terrestrial magnetism sensing
`
`module 31 consists of a magnetic sensor to detect the remote controller’s
`
`terrestrial magnetism in the X, Y and Z axes.” Paper No. 8 at 8 (quoting Ex.
`
`1001, col. 3, l. 47 – col. 4, l. 19) (emphasis added).  All parties agree that Smith
`
`does not “detect the remote controller’s terrestrial magnetism in the X, Y and Z
`
`axes.” See Section I.C., infra. For Smith to anticipate, this Honorable Board
`
`would need to construe the claims in a manner “that excludes the preferred
`
`embodiment [which] ‘is rarely, if ever, correct and would require highly
`
`persuasive evidentiary support.’” Adams Respiratory Therapeutics, Inc. v.
`
`Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996)).
`
`A.
`
`
`Smith Does Not “Determine Changes In Orientation”
`In physics, “motion” is defined as “a change in position of an object
`
`with respect to time.” Ex. 2015 (emphasis added).1 Consistent with this
`
`                                                            
`1  Available at http://en.wikipedia.org/wiki/Motion_(physics). 
`5 
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`established definition, Petitioners urged that, under the broadest reasonable
`
`interpretation, “determining changes in orientation” is within the scope of the
`
`claimed “detect[ing] the remote controller’s motion.” See Paper No. 1 at 9, 17,
`
`18, 27, and 48 (emphasis added). This Honorable Board accepted Petitioners’
`
`argument, noting that:
`
`A dispositive question . . . [is] whether determining a change in
`orientation is within the scope of the claimed “detect[ing] the
`remote controller’s motion.”
`Paper No. 8 at 7 (emphasis added; italics in original).
`
`
`
`As with the definition of “motion,” “determining changes in orientation”
`
`requires comparing the various orientations of the object with respect to time,
`
`i.e., orientation of the object at one point in time compared to the orientation of
`
`the object at another point in time. As Petitioners’ own declarant testified:
`
`A: Change means that something is different than what it was
`before.
`Q: Right, and so you need to know what it was before?
`A: Correct.
`Ex. 2012 (D’Andrea Depo.), p. 274, l. 23 – p. 275, l. 2. Smith concurs, see Ex.
`
`2014 (Smith Decl.), ¶¶ 13, 21, as does Prof. Sturges, Ex. 2013, ¶¶ 18-21.
`
`It is not possible to determine changes in orientation if the orientation of
`
`the object is observed at a particular point in time but then never compared to
`
`“what it was before.” Ex. 2012 (D’Andrea Depo.), p. 274, l. 23 – p. 275, l. 2.
`6 
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`The comparison of the object’s orientations at different points in time is
`
`absolutely necessary for “determining changes in orientation.” Ex. 2014
`
`(Smith Decl.), ¶ 21.
`
`This difference between “determining orientation” and “determining
`
`changes in orientation” is critical here because, while Smith discloses
`
`“determining orientation,” it does not disclose “determining changes in
`
`orientation.” No less of an authority than Smith himself explains:
`
`To determine changes in orientation of the remote controller, the
`system would need to calculate a difference between the remote
`controller’s orientation at different points in time. Nothing in my
`Patent discloses that. Other than as I have previously described,
`we never made any such determinations, nor saved them, for any
`purpose. We never contemplated determining changes in the
`remote controller’s orientation, and such determinations were
`never part of our invention or disclosed in my Patent.
`
`Ex. 2014 (Smith Decl.), ¶ 21.
`
`Petitioners successfully urged this Honorable Board to adopt
`
`“determining changes in orientation” as the broadest reasonable interpretation
`
`of the claimed “detect[ing] the remote controller’s motion.” Paper No. 8 at 7.
`
`Under that interpretation, however, Smith cannot anticipate any claim because
`
`it does not disclose “determining changes in orientation.” Ex. 2014 (Smith
`
`Decl.), ¶ 21; Ex. 2013 (Sturges Decl.), ¶¶ 63-64. Rather, Smith only discloses
`
`discrete, unrelated determinations of orientation without any subsequent
`
` 
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`7 
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`

`

`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`comparison thereof. Ex. 2014 (Smith Decl.), ¶¶ 14, 21. As such, Smith does
`
`not, and indeed cannot, determine “changes in orientation.” Id.; Ex. 2013
`
`(Sturges Decl.), ¶¶ 63-64.
`
`Petitioners’ declarant readily conceded this point, i.e., that (i) Smith does
`
`not retain the orientation of the remote controller after it sends the signal, and
`
`(ii) Smith does not care at all about the orientation the last time it sent a signal
`
`(both of which would be required to determine changes in orientation):
`
`Q:
`
`A:
`Q:
`
`Is it your understanding that when Smith sends a signal
`from the remote controller to the remote-controlled device
`that it retains the orientation of the remote controller after it
`sends the signal?
`From the teachings, no.
`Is it your understanding that when Smith sends a second
`signal from the remote controller to the remote-controlled
`device that it cares at all about the orientation the last time
`it sent a signal?
`A: No.
`Ex. 2012 (D’Andrea Depo.), p. 155, l. 23 – p. 156, l. 8. Smith himself concurs.
`
`Ex. 2014 (Smith Decl.), ¶ 14 (“We did not retain or use the orientation of the
`
`remote controller after we sent the direction control signal.”).
`
`
`
`Because anticipation requires that each and every element of the claim
`
`be disclosed in the prior art reference, Liebel-Flarsheim Co. v. Medrad, Inc.,
`
`481 F.3d 1371, 1381 (Fed. Cir. 2007), and because Smith does not disclose
`
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`8 
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`

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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`“determining changes in orientation,” claims 1-5 and 10-14, are not
`
`anticipated. See Ex. 2013 (Sturges Decl.), ¶¶ 62-65.
`
`B.
`
`Smith Does Not Consider the “Difference of Motion Between The
`Remote-Controlled Device and The Remote Controller”
`In the ‘071 Patent, the remote-controlled device operates “by
`
`synchronizing its detected terrestrial magnetism with the target motion signal
`
`from the remote controller, the motion of the remote-controlled device is
`
`synchronized with the motion of the remote controller.” Ex. 1001, col. 2, l. 64
`
`– col. 3, l. 1. Claim 4 expressly requires the comparison of the remote-
`
`controlled device’s motion “with the target motion signal to get the difference
`
`of motion between the remote-controlled device and the remote controller.”
`
`Id., col. 8, ll. 37-39. This Honorable Board construed “difference of motion”
`
`to mean simply “relative motion” (Paper No. 8 at 10), i.e., to get the relative
`
`motion between the remote-controlled device and the remote controller.
`
`Smith does not do, and therefore does not disclose, what claim 4
`
`requires, i.e., a comparison of the target motion signal (sent by the remote
`
`controller) with the remoter-controlled device’s motion, “to get the difference
`
`of motion,” or “relative motion” (under this Honorable Board’s construction).
`
`See Ex. 2013 (Sturges Decl.), ¶¶ 67-68.
`
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`9 
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`

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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`Simply put, Smith does not transmit a signal that contains any
`
`information about the orientation of the remote controller (Ex. 2014 (Smith
`
`Decl.), ¶ 16), and certainly no information about any changes in orientation of
`
`the remote controller. See also Ex. 2013 (Sturges Decl.), ¶¶ 63. Smith only
`
`discloses that it sends an “absolute direction,” i.e., a heading between 0 and
`
`359 degrees. Ex. 1002, col. 5, ll. 40-42; see also FIG. 5. This “absolute
`
`direction” is the selected direction, and is the sum of (1) the orientation of the
`
`remote control transmitter relative to magnetic north and (2) the orientation of
`
`the joystick shaft relative to the remote control transmitter:
`
`The user selects a desired direction (D) with the joystick shaft 26j
`(“selected direction”) while simultaneously depressing either the
`forward 28 or reverse switch 32. The absolute direction
`(“absolute” meaning relative to magnetic North) corresponding to
`the selected direction is obtained by summing the orientation of
`the remote control transmitter 100 relative to magnetic north with
`the orientation of the shaft 26j relative to the remote control
`transmitter 100. For example, if the user moves the joystick shaft
`26j so that it is oriented 90° relative to the remote control
`transmitter 100 while holding the remote control transmitter 100
`so that it is oriented 60° from North, the user has selected an
`absolute direction of 150° relative to North. A direction control
`signal containing information about the absolute direction relative
`to magnetic North can then be provided to an ordinary radio
`transmitter 36 via line 34 and then transmitted over antenna 38 to
`the car 200.
`
`Id., col. 5, ll. 14-31 (emphasis added). See also Ex. 2014 (Smith Decl.), ¶¶ 14-
`
`16, and Ex. 2013 (Sturges Decl.), ¶¶ 40-44.
`
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`10 
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`By summing the orientation of the joystick relative to the remote control
`
`transmitter, and the orientation of the remote controller relative to magnetic
`
`north, the resulting “absolute direction” is the orientation of the joystick
`
`relative to magnetic north. Id. The orientation of the remote controller is no
`
`longer relevant and is not included in the signal being transmitted. Id. As a
`
`result, Smith does not disclose, indeed could not disclose, a comparison of the
`
`‘071 Patent’s target motion signal (which does include information about the
`
`remote controller’s motion (or “change in orientation”)) with the remote-
`
`controlled device’s motion, “to get the difference of motion,” or “relative
`
`motion.”
`
`While this distinction is clearly explained in the Smith Patent, see, e.g.,
`
`Ex. 1002, col. 5, ll. 11-31, Mr. Smith provided another illustration in his
`
`declaration to make the point even clearer:
`
`Consider 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 (North). The user
`facing west would move his joystick to the right (also North).
`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 Patent, the
`exact same direction control signal would be sent by the remote
`controllers to the remote-controlled cars because the orientations
`of the joysticks relative to magnetic North would be the same.
`Ex. 2014 (Smith Decl.), ¶ 17.
`
` 
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`11 
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`

`

`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`Because Smith does not disclose getting the “difference of motion
`
`between the remote-controlled device and the remote controller,” (Ex. 2014
`
`(Smith Decl.), ¶ 21), it cannot anticipate claim 4 of the ‘071 Patent. See Ex.
`
`2013 (Sturges Decl.), ¶¶ 68-69. And because Smith does not disclose a
`
`comparison of the ‘071 Patent’s target motion signal with the remote-
`
`controlled device’s terrestrial magnetism sensing signal (Ex. 2014 (Smith
`
`Decl.), ¶¶ 18, 21), it cannot anticipate claim 2 of the ‘071 Patent.
`
`C.
`
`Smith Does Not Sense the Remote Controller’s Terrestrial
`Magnetism in the X-, Y-, and Z-Axes
`At page 8 of the Institution Decision, this Honorable Board quoted a
`
`section of the ‘071 Patent specification that explains, inter alia, “[t]he
`
`terrestrial magnetism sensing module 31 consists of a magnetic sensor to detect
`
`the remote controller’s terrestrial magnetism in the X, Y and Z axes.” Paper
`
`No. 8, at 8 (emphasis added). All parties agree that Smith does not “detect the
`
`remote controller’s terrestrial magnetism in the X, Y and Z axes:”
`
`Q: Okay. So you read Claim 1, in particular, the term
`“terrestrial magnetism sensing module” as meaning a
`magnetometer or similar device to sense the earth’s
`magnetic field and nothing else, right?
`A: Yes.
`Q: Did you read it to be one magnetometer or could it be
`multiple magnetometers?
`
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`
`12 
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`A:
`It’s a sensing module, so anything that senses the earth’s
`magnetic field.
`Q: Did you read it to be one magnetometer or potentially three
`orthogonal magnetometers?
`Let me reread my patent – the patent and I can tell you.
`Yeah. So it’s sensing the – it senses the earth's magnetic
`field in three orthogonal [i.e., X-, Y-, and Z-] axes.
`Q: And Smith doesn’t do that, right?
`A:
`Smith does not do that.
`Ex. 2012 (D’Andrea Depo.), p. 212, l. 18 – p. 213, l. 9. Smith concurs,
`
`A:
`
`Ex. 2014 (Smith Decl.), ¶¶ 25-26 (“The invention in my Patent cannot
`
`determine orientation (or changes in orientation) about the X-axis or the Y-
`
`axis.”), and Prof. Sturges concurs, Ex. 2013 (Sturges Decl.), ¶¶ 40-41 (“A
`
`single flux gate compass, as disclosed in Smith, cannot detect changes in
`
`orientation in the X-, Y-, and Z-axes.”), and ¶ 70.
`
`For Smith to anticipate, this Honorable Board would need to construe
`
`the claims in a manner “that excludes the preferred embodiment [which] ‘is
`
`rarely, if ever, correct and would require highly persuasive evidentiary
`
`support.’” Adams Respiratory, 616 F.3d at 1290 (quoting Vitronics, 90 F.3d at
`
`1583-84). Because such a construction would be improper, Smith cannot
`
`anticipate the claims of the ‘071 Patent.
`
` 
` 
`
`13 
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`

`

`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`D.
`Petitioners Urge An Unreasonable Interpretation of Claim 13 In
`Order To Argue For Anticipation
`In order to argue that Smith anticipates claim 13 of the ‘071 Patent,
`
`Petitioners proffered an unreasonable interpretation of the claim. Claim 13
`
`reads as follows:
`
`13. The remote control system of claim 1, wherein the motion
`detecting signal represents the information of the remote
`controller’s motion in the 3D space.
`
`
`Ex. 1001, col. 9, ll. 9-11.
`
`Petitioners’ declarant argues that “in the 3D space” refers to the motion
`
`occurring in 3D space. Ex. 1010, ¶¶ 82-83. The proper construction, indeed
`
`the broadest reasonable interpretation, is that the motion detecting signal
`
`represents the information of motion in 3D space (i.e., “in the 3D space”
`
`merely qualifies the type of “information” described in claim 13). Ex. 2013
`
`(Sturges Decl.), ¶¶ 31, 70.
`
`Petitioners’ proffered construction is unreasonable. If correct, it would
`
`make the phrase “in the 3D space” superfluous because all motion must take
`
`place in 3D space:
`
`Q:
`
`A:
`
`Sir, agree or disagree, all motion must take place in 3D
`space?
`I agree.
`
` 
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`14 
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`Ex. 2012 (D’Andrea Depo.), p. 111, ll. 14-16; see also Ex. 2013 (Sturges
`
`Decl.), ¶¶ 31, 70. Thus, if the phrase “in the 3D space” merely states the
`
`obvious fact that all motion must take place in 3D space, as Petitioners argue,
`
`then the phrase is given no effect in claim 13:
`
`Q: And so when you say this is the only reasonable
`interpretation of [the] additional limitation of Claim 13,
`you’re reading Claim 13 as referring to motion taking place
`in 3D space, right?
`A: Correct.
`Q:
`So it’s not information about motion in 3D space. It’s just
`the motion taking space [sic, place] in 3D space, right?
`A: Repeat the question.
`Q:
`She’ll read it.
`(Last question read back.)
`The motion takes place in 3D space, correct.
`A:
`Ex. 2012 (D’Andrea Depo.), p. 248, l. 22 – p. 249, l. 9.
`
`Of course, the well-established rule is that “claims are interpreted with
`
`an eye toward giving effect to all terms in the claim.” Bicon, Inc. v. Straumann
`
`Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (emphasis added), but Petitioners seem
`
`intent on violating that rule by making the phrase “in the 3D space”
`
`superfluous. Petitioners, and their declarant, must stake out this unreasonable
`
`position because if Claim 13 is properly construed to mean that the motion
`
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`15 
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`

`

`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`detecting signal represents the information of motion in 3D space, then Smith
`
`admittedly does not anticipate claim 13:
`
`Q:
`
`A:
`
`So if somebody is talking about motion in an X, Y and Z
`axis, what does that mean?
`That means motion in 3D space.
`* * *
`Q: And so motion in an X, Y and Z axis is motion in 3D space;
`and, therefore, it requires six pieces of information?
`MR. HOPENFELD: Objection. Lacks foundation.
`Objection to the extent it calls for a legal conclusion.
`A: Can you repeat the question?
`(Last question read back.)
`It requires six pieces of information to fully describe the
`motion of a rigid body in a 3D space.
`Q: And those six pieces of information are three degrees of
`freedom rotationally. Am I saying that right?
`A: Yeah.
`Q: And three degrees of freedom translationally?
`A: Correct.
`
`A:
`
`* * *
`So of the six pieces of information that we need to represent
`a rigid body's motion in 3D space, Smith provides how
`many?
`Smith provides – the right way to say this is it provides
`with a – it provides one.
`Just one of the six?
`That is correct.
`
`Q:
`
`A:
`
`Q:
`A:
`
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`16 
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`
`* * *
`Q: Okay. Smith doesn't disclose and isn’t equipped to provide
`information about translational motion in 3D space, right?
`A: Correct.
`Q: And it’s not equipped and doesn’t disclose two of the three
`degrees of freedom for rotational motion in 3D space, right?
`A: Correct.
`Q: Okay. So what Smith discloses in terms of motion in 3D
`space is limited to one of the six degrees of freedom that
`you say are necessary to fully describe motion of a rigid
`body in 3D space?
`A: Correct.
`Ex. 2012 (D’Andrea Depo.), p. 120, l. 9 – p. 121, l. 4, p. 122, l. 7 – p. 124, l.
`
`21. Again, Smith concurs, Ex. 2014 (Smith Decl.), ¶ 25-26 (“The invention in
`
`my Patent cannot determine orientation (or changes in orientation) about the
`
`X-axis or the Y-axis.”), and Prof. Sturges concurs, Ex. 2013 (Sturges Decl.),
`
`¶¶ 40-41 (“A single flux gate compass, as disclosed in Smith, cannot detect
`
`changes in orientation in the X-, Y-, and Z-axes.”)
`
`
`
`From the specification of the ‘071 Patent quoted by this Honorable
`
`Board (Paper No. 9 at 7-8), and from a proper reading of the claim language, it
`
`is clear that claim 13 requires information about the X-, Y-, and Z-axes, i.e., in
`
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`3D space,2 and therefore the claims cannot be anticipated by Smith which
`
`admittedly discloses only one of the six required pieces of information.
`
`II. NEITHER BATHICHE NOR SHKOLNIKOV IS ANALOGOUS
`ART
`To be used in an obviousness rejection (e.g., of claim 15), a reference
`
`must be analogous to the claimed invention. This consideration assesses
`
`“whether the art is ‘too remote to be considered prior art.’” In re Clay, 966
`
`F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 721 (Fed.
`
`Cir. 1985)). This assessment requires evaluation of two criteria: “(1) whether
`
`the art is from the same field of endeavor, regardless of the problem addressed,
`
`and (2) if the reference is not within the field of the inventor’s endeavor,
`
`whether the reference still is reasonably pertinent to the particular problem
`
`with which the inventor is involved.” Id. at 659. The doctrine of analogous art
`
`serves to limit the scope of obviousness, in that “[t]he combination of elements
`
`from non-analogous sources, in a manner that reconstructs the applicant’s
`
`invention only with the benefit of hindsight, is insufficient to present a prima
`
`facie case of obviousness.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir.
`
`1992).
`
`                                                            
`2
`Dr. D’Andrea testified that the “X-, Y-, and Z-axes,” and “3D space”
`are, “for all intents and purposes the same thing.” Ex. 2012, p. 168, ll.
`13-17.
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`Neither Bathiche nor Shkolnikov is analogous prior art and their use in
`
`the obviousness rejection of claim 15 is inappropriate. Bathiche is directed to
`
`a hand held computer input device. Ex. 1008, abstract. As defined by the
`
`Petitioners’ declarant, the ‘071 Patent relates “to controlling dynamic systems,
`
`and specifically how they relate to flying things:”
`
`Q: Meaning that the ‘071 and ‘748 patents are related to
`controlling dynamic systems?
`That is correct.
`A:
`Q: Are they also related to controlling dynamic systems, and
`specifically how they relate to flying things, such as
`airplanes and drones?
`I would say that they are.
`A:
`Ex. 2012 (D’Andrea Depo.), p. 13, ll. 10-16.
`The problem being addressed by the ‘071 Patent “was to be able to
`
`control these vehicles in a[n] as-claimed easier way.”
`
`A:
`
`Q: What was the problem that you determined was being
`addressed by the respective patents?
`The problem being addressed was to be able to control
`these vehicles in a[n] as-claimed easier way.
`Easier than what?
`Q:
`Easier than what had been done before.
`A:
`Q: Okay. And what had been done before?
`A:
`Jeeze.
`MR. HOPENFELD: Objection. Vague and ambiguous.
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`A: What is the question? What has been done before in what?
`In the sense of controlling vehicles? How much time do we
`have?
`Ex. 2012 (D’Andrea Depo.), p. 96, ll. 1-13.
`Significantly, before receiving the prior art references from Petitioners’
`
`counsel, Petitioners’ declarant had never seen the Bathiche or Shkolnikov
`
`references, had never heard of their names, and had never crossed paths with
`
`them at a show or a conference. Id. at 247:9-17. They are from non-analogous
`
`arts.
`
`Neither Petitioners’ declarant, nor anyone of ordinary skill in the art of
`
`control systems would turn to computer input devices to modify a reference
`
`concerning remotely controlled vehicles. Ex. 2013 (Sturges Decl.), ¶¶ 60, 75.
`
`Bathiche is not in the ‘071 Patent’s field of endeavor, nor reasonably pertinent
`
`to the particular problem with which the ‘071 Patent is concerned. See Clay,
`
`966 F.2d at 659.
`
`Similarly, Shkolnikov (Ex. 1009) is an active keyboard system for hand-
`
`held electronic devices. Id.at ¶ 20. Shkolnikov discloses entering
`
`alphanumeric text and data into the system using only one hand. Id. In no way
`
`is this technology analogous to the ‘071 Patent.
`
`Just as with Bathiche, Shkolnikov is not in the ‘071 Patent’s field of
`
`endeavor, nor reasonably pertinent to the particular problem with which the
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`‘071 Patent is concerned (i.e., easier control of remotely controlled “flying
`
`things”). See Clay, 966 F.2d at 659. Its use is wholly inappropriate. Further,
`
`the use of Spirov in the rejection of claim 15 is inappropriate as it does not
`
`disclose a system that operates in multiple modes. See Ex. 2013 (Sturges
`
`Decl.), ¶¶ 52-58; 73-74.
`
`Accordingly, the rejection of claim 15 should be withdrawn.
`
`III. PETITIONERS’ DECLARANT’S TESTIMONY SHOULD BE
`GIVEN LITTLE OR NO WEIGHT
`
` 
`
`In his testimony, Petitioners’ declarant, Dr. D’Andrea, gave ample
`
`reasons why his opinion should be given little or no weight:
`
` This is his first patent invalidity opinion: “I’m a novice.” Ex. 2012
`(D’Andrea Depo.), p. 7, ll. 8-15;
` He interacted only with Petitioners’ lawyers, not with any technical
`or business people at Petitioners, id., p. 13, l. 22 – p. 14, l. 11;
` He had been paid for 40 hours of work, id., p. 15, ll. 5-8, at 750
`Swiss francs per hour (Ex. 1010, ¶5), totaling approximately $32,000
`(not counting the deposition);
` Petitioners’ lawyers hand-picked the prior art he was to rely on, Ex.
`2012 (D’Andrea Depo.), p. 21, ll. 2-5, and also “made known” “their
`opinions” of that prior art: “Their opinions were made known to me
`so that I could have all the information available so the declaration
`could be created.” Id., p. 23, ll. 2-4;
` D’Andrea and Petitioners’ two lawyers “worked as a team, the three
`of [them], to prepare the declarations.” Id., p. 69, ll. 1-3;
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
` D’Andrea refused to estimate how much (if any) of his declaration
`was his analysis and how much had been provided by Petitioners’
`lawyers. Id., p. 23, l. 22 – p. 24, l. 7;
` D’Andrea used multiple references in opining that claims were
`anticipated by Smith:
`Q: Do you understand that anticipation requires –
`A: Only one.
`Q:
`– only one reference?
`A:
`That is correct. So by definition, anything where I said
`anticipation would have meant only one reference.
`Q: And my question was if you only used one reference,
`which was Smith, right?
`I used multiple references.
`A:
`For the anticipation of ‘071 claims?
`Q:
`A: Correct.
`Id., p. 312, l. 21 – p. 313, l. 7.
`Clearly Petitioners’ declarant, Dr. D’Andrea, does not understand what
`
`is required for a competent validity analysis and cannot be trusted to fairly
`
`apply his technical expertise to the claims at issue. Rather, by all appearances,
`
`Petitioners’ took advantage of his naiveté, paying him well in excess of
`
`$30,000 to add his signature and imprimatur to counsel’s arguments (in the
`
`form of his declaration), and using counsel’s hand-picked prior art, in the
`
`hopes of making the arguments more credible to this Honorable Board.
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`Patent Owner’s Response to the Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
`IV. CONCLUSION
`
`S