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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`In re U.S. Patent No. 8,092,345
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`Filed:
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`November 13, 2009
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`Issued:
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`January 10, 2012
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`Inventors: Michael Ellis; Caron Ellis
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`Title:
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`Systems and Methods for a Portable Electronic Journal
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`Mail Stop PATENT BOARD, PTAB
`Patent Trial and Appeal Board
`U.S.P.T.O.
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF JOSEPH A. PARADISO
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`I, Joseph A. Paradiso, make this declaration in connection with the petition for
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`inter partes review submitted by Petitioner for U.S. Patent No. 8,092,345 (“the ‘345
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`Patent”). All statements herein made of my own knowledge are true, and all
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`statements herein made based on information and belief are believed to be true. I am
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`over age 21 and otherwise competent to make this declaration. Although I am being
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`compensated for my time in preparing this declaration, the positions articulated herein
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`are my own, and I have no stake in the outcome of this proceeding or any related
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`litigation or administrative proceedings.
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`I.
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`Background and Qualifications
`1. Appendix A to this declaration is my curriculum vitae. As shown in my curriculum
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`vitae, I have devoted my career to various fields of physical, electrical, and computer
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`science with more than two decades focused on embedding sensing, including
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`wearable and wireless sensors.
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`2. I am an Associate Professor of Media Arts and Sciences at the Massachusetts
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`Institute of Technology (MIT) where I direct the Responsive Environments Group,
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`which explores how sensor networks augment and mediate human experience,
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`interaction and perception. I also serve as co-director of the Things That Think
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`Consortium, a group of MIT Media Lab researchers and industrial partners focused
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`on the future of embedded computation and sensing.
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`3. I received my B.S. in electrical engineering and physics summa cum laude from
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`Tufts University in 1977 and my Ph.D. in physics from MIT in 1981. From 1981 to
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`1984 I did post-doctoral research at the Swiss Federal Institute of Technology (ETH)
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`in Zurich, working on sensor technology for high-energy particle physics. From
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`1984-1994, I was a physicist at the Draper Laboratory in Cambridge, Massachusetts,
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`where, as a member of the NASA Systems and Advanced Sensors and Signal
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`Processing Directorates, my research included spacecraft control systems and sensor
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`technology for both sonar systems and high-energy physics. From 1992-1994, I
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`directed the development of precision alignment sensors for the GEM muon detector
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`at the Superconducting Supercollider, and worked on design of particle detectors at
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`the CERN Large Hadron Collider (LHC). I joined the MIT Media Laboratory in
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`1994.
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`4. Upon joining the Media Laboratory, I focused on developing new sensing
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`modalities for human-computer interaction, then evolved my research into wearable
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`wireless sensing and distributed sensor networks. This work anticipated and
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`influenced transformative products and industries that have blossomed in recent
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`years. For example, the sensor-laden wireless shoe I developed for interactive dance
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`in 1997 is recognized as a watershed in the field of wearable wireless sensing and was
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`an inspiration for the Nike+, one of the very first activity trackers and the first
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`commercial product to integrate dynamic music with monitored exercise (accordingly,
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`I am often requested to consult on IP as a technical expert for these companies). My
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`team went on to pioneer clinical gait analysis with wearable wireless sensors in
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`collaboration with the Massachusetts General Hospital (MGH) in 2002, and then
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`broke new ground in sports medicine with another MGH collaboration that
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`developed an ultra-wide-range wireless inertial measurement unit system for
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`evaluating professional baseball pitchers in 2007.
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`5. Leading to over 250 publications, 15 issued patents, and a string of awards in
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`the Pervasive Computing, Human Computer Interaction, and sensor network
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`communities, my research has become the basis for widely established curricula. I
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`have also advised over 55 graduate students on various research projects and
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`publications. For example, I have advised one former student—Ari T. Adler—on the
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`development of a portable Telemedicine Kit for collecting and sharing patient data in
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`remote areas lacking developed medical facilities and infrastructure. I also have been
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`invited to keynote on the sensor revolution for prestigious venues ranging from the
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`Sensors Expo (the main industrial sensors conference) to the World Economic
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`Forum.
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`A.
`Status as an Independent Expert Witness
`6. I have been retained in this matter by Weil, Gotshal & Manges LLP ("Weil") to
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`provide various observations regarding the ‘345 Patent. I am being compensated at
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`the rate of $450.00 per hour for my work. My fee is not contingent on the outcome
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`of this matter or on any of the positions I have taken, as discussed below.
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`7. I have been advised that Weil represents the Petitioner in this matter. I have
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`no direct financial interest in the Petitioner.
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`8. I have been advised that adidas AG (hereinafter referred to as “adidas”) owns
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`the ‘345 Patent. I have no financial interest in adidas, including its subsidiaries, or the
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`‘345 Patent. To the best of my knowledge I have not ever had any contact with
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`Michael Ellis or Caron Ellis, the named inventors of the ‘345 Patent.
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`II. Materials Considered
`9. I have reviewed the ‘345 Patent and its prosecution history. I have also
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`reviewed U.S. Patent No. 6,513,532 to James R. Mault et al. (“Mault”; Exhibit UA-
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`1004 to the petition); U.S. Patent No. 6,321,158 to David M. DeLorme et al.
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`(“DeLorme”; Exhibit UA-1005 to the petition); A Cost-Effective Portable Telemedicine Kit
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`for Use in Developing Countries by Ari. T. Adler (“Telemedicine Kit”; Exhibit UA-1006 to
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`the petition); U.S. Patent No. 6,790,178; NavTalk™ Cellular Phone/ GPS Receiver,
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`Owner’s Manual and Reference Guide (January 2000); Toshiba Satellite 2530CDS
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`Product Specifications (February 2000); and the File History for U.S. Patent No.
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`7,905,815 to Ellis, et al. Additionally, I have reviewed each of the following
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`documents included herewith as Appendices:
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`Curriculum Vitae for Joseph A. Paradiso
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`Appendix A
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`III. The Person of Ordinary Skill in the Relevant Field in the Relevant
`Timeframe
`10. I have been informed that “a person of ordinary skill in the relevant field” is a
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`hypothetical person to whom an expert in the relevant field could assign a routine task
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`with reasonable confidence that the task would be successfully carried out. I have
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`been informed that the level of skill in the art is evidenced by the prior art. The prior
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`art discussed herein and otherwise demonstrates that a person of ordinary skill in the
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`art, at the time the ‘815 patent was filed, was aware of wireless networking, wearable
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`computers and mobile systems, computer programming, embedded computing, basic
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`human-computer interaction devices, basic movement, biometric, and position
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`sensors, and basic media recording devices.
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`11. In my opinion, a person having ordinary skill in the art would have, through
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`training or experience, an understanding of basic analog and digital circuits,
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`microcontrollers, transmitters, receivers, signaling, sensing, and embedded software,
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`and that such a person would have at least a bachelor’s degree in electrical
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`engineering, computer engineering, or computer science, and three or more years of
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`practical experience with sensing, signaling, and embedded and/or mobile systems, or
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`the equivalent.
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`12. Furthermore, a person of ordinary skill would have a Bachelor’s degree in
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`electrical engineering or computer science and at least two years industry experience
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`or the equivalent. Based on my experience, I have a good understanding of the
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`capabilities of a person of ordinary skill in the relevant field. I have interviewed,
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`hired, trained, supervised, directed, and advised many such persons over the course of
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`my career.
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`IV. The ‘345 Patent
`13. The ‘345 Patent describes that, in the prior art, there is a proliferation of
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`portable electronic devices. See UA-1001 at 1:27-34. The ‘345 Patent argues that,
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`while individually useful, these devices cannot interoperate and therefore cannot be
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`combined to provide improved functions. See UA-1001 at 1:35-40. To address this
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`problem, the ‘345 Patent introduces a “modular personal network.” UA-1001 at 3:32-
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`33. A modular personal network is network of wireless devices with a control unit,
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`and it may include a base station. See UA-1001 at 3:33-39, 3:57-62. Wireless devices
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`can be added and subtracted from the system. See UA-1001 at 3:33-59. In this way, a
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`wireless device can be upgraded or the functionality of the system augmented without
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`having to replace the entire system.
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`14. While the modular personal network is described in the ‘345 Patent Summary
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`as the invention, the ‘345 Patent claims are not so broad. Instead, the claims are
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`directed to one of several different wireless devices described by the ‘345 Patent.
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`Specifically, the ‘345 Patent claims a portable electronic journal. See UA-1001 at claim
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`1. The electronic journal enables a user to create electronic journal entries using voice
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`or text input. See UA-1001 at 39:42-46, 39:59-65, claims 1, 20. The electronic journal
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`can include a digital camera whereby a digital image can be stored along with the
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`journal entry. See UA-1001 at 39:65-40:4, claims 1, 20. Each journal entry is also
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`tagged with a date and time. See UA-1001 at 40:4-6, claims 1, 20.
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`15. In essence, the ‘345 Patent claims take the long-established concept of keeping
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`a personal journal, but implements the journal using commonplace electronics. As
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`seen below, however, electronic journals were well-known in the prior art prior to the
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`earliest possible priority date of the ‘345 Patent.
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`V.
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`Claim Interpretation
`16. In the present proceeding, I have been advised that the claims are to be given
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`their broadest reasonable interpretation in view of the specification (“BRI”) and that
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`this standard differs from the one used in district court patent litigation. I therefore
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`understand that I am not bound by the findings of the district court. I note that my
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`conclusions below may vary if I were to apply the district court's claim construction
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`standard.
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`A.
`“common file format” (claims 1, 20)
`17. The ‘345 Patent claims software on a portable electronic journal that is capable
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`of, or in fact does, “format[s] the journal entry to a common file format.” One of
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`ordinary skill in the art would understand that “common file format” can be any well-
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`known or standardized format that permits easy viewing or printing with a computer
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`under the broadest reasonable interpretation and in light of the specification. The
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`specification of the ‘345 Patent states that “the uploaded journal may be converted
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`into a standard file format, so that it may be easily viewed or printed with the personal
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`computer.” UA-1001 at 40:26-28. Further, “[t]he file format may include HTML,
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`PDF, or any other suitable format,” and “[i]mages and audio segments may also be
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`stored in a common file format.” Ex. UA-1001 at 40:28-31. A person of ordinary
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`skill in the art would therefore interpret “common file format” to be any well-known
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`or standardized format that permits easy viewing or printing with a computer, such as
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`a personal computer.
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`B.
`“advertisement” (claim 18)
`18. The ‘345 Patent claims a portable electronic journal that provides localized
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`advertisements or discounts. One of ordinary skill in the art would understand that
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`the broadest reasonable interpretation of the term “advertisement” is “a calling
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`attention to or making known.” This is consistent with the specification, which only
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`uses the term twice to recite that an advertisement for a local business is presented to
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`the user. See UA-1001 at 65:39-42, 66:50-59.
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`VI. Unpatentability Based on Prior Art in the Present Proceedings
`19. I have been informed that the ‘345 Patent is a division of U.S. Patent
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`Application No. 10/645,713, filed on May August 20, 2003, now U.S. Patent No.
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`7,670,263, which is a continuation of U.S. Patent Application No. PCT/US02/04947,
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`filed on February 20, 2002, which claims the benefit of U.S. Provisional Patent
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`Application No. 60/270,400, filed on February 20, 2001. Note that I have not
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`considered whether the ‘345 Patent claims are entitled to the filing the date of the
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`Provisional Application, but I have been informed that the art that supports my
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`conclusions is prior art.
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`20. I have been further informed that a patent claim can be found unpatentable as
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`obvious where the differences between the subject matter sought to be patented and
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`the prior art are such that the subject matter as a whole would have been obvious at
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`the time the invention was made to a person having ordinary skill in the relevant field.
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`I understand that an obviousness analysis involves a consideration of (l) the scope and
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`content of the prior art; (2) the differences between the claimed inventions and the
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`prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary
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`considerations of non-obviousness.
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`A.
`Claims 1-4, 6-11, 15-18, and 20 are Obvious Over Mault in View of
`DeLorme
`21. It is my opinion that claims 1-4, 6-11, 15-18, and 20 would have been obvious
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`to one of ordinary skill in the art over Mault in view of DeLorme. My analysis of the
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`scope and content of the prior art references follows. Additionally, I have compared
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`the prior art references with claims 1-11, 15-18, and 20 of the ‘345 Patent, noting
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`differences, or lack thereof.
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`22. Mault is U.S. Patent No. 6,513,532. The patent lists James R. Mault, Edwin
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`Pearce, David Gilmore, Roshi Givechi, Jeanne Ragan, Andrzej Skoskiewicz, and Neil
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`Grimmer as its inventors. It is titled “Diet and Activity-Monitoring Device,” was filed
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`on December 23, 2000, and issued on February 4, 2003. Mault incorporates by
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`reference several then co-pending patent applications. In particular, Mault
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`incorporates by reference U.S. Patent App. No. 09/669,125, which was filed
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`September 25, 2000 and since issued on September 14, 2004 at U.S. Patent No.
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`6,790,178. See UA-1004 at 18:11-14; UA-1007.
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`23. Much like the ‘345 Patent, Mault discloses a portable activity monitoring device
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`that enables a user to log activity and food consumption, thereby tracking one’s
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`caloric balance (i.e., calories consumed less calories expended). See, e.g., UA-1004 at
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`3:9-19. Specifically, Mault discloses a monitoring device, which can comprise a single
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`device (e.g., a wrist-watch with integrated GPS and heart-rate monitor) or multiple
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`distributed components (e.g., such as a wrist-watch with a separate heart-rate monitor).
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`See, e.g., UA-1004 at 10:46-52.
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`UA-1004 at Fig. 1.
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`24. The monitoring device includes a “body activity monitor” and a “consumption
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`notation control.” The former is used to log a user’s daily activities and accordingly
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`may include a GPS, a heart-rate monitor, an accelerometer, or some other means of
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`outputting a signal indicative of the user’s body activity. See, e.g., UA-1004 at 3:34-52,
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`3:63-4:5, 7:3-22, 8:43-60. By time-stamping these signals, the monitoring device can
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`keep track of the user’s activity over time. See, e.g., UA-1004 at 5:40-43. Further, the
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`user can manipulate the monitoring device when a workout is completed, and the
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`monitoring unit will record this and the time the control was manipulated as an
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`exercise “flag.” See, e.g., UA-1004 at 4:28-35. Additionally, a user may log an activity
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`entry by using “audio or video recording … to note exercise conducted.” UA-1004 at
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`16:63-17:3.
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`25. The consumption notation control of the body activity monitor is used to log
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`food and caloric consumption. See, e.g., UA-1004 at 4:48-55. As with exercise, a user
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`can manipulate the monitoring device to record a food flag, an audio notation, or an
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`image of the food along with the time the food was consumed. See, e.g., UA-1004 at
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`4:55-61, 5:3-14.
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`26. Mault discloses that the monitoring device comprising the body activity
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`monitor and/or the consumption notation control may take several forms. For
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`example, “the monitoring device may be a PDA that includes or communicates with a
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`body activity monitor.” UA-1004 at 18:7-14. This PDA embodiment provides
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`additional food and exercise logging capabilities, including using the PDA to, “in
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`addition to recording food flags, … log actual foods consumed either at the time of
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`consumption or later.” UA-1004 at 18:14-18. Further, “additional information may
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`be easily input as to activity level.” UA-1004 at 18:18-19.
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`27. According to Mault, information disclosed on the monitoring device may be
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`communicated to “local and remote computers using any of a variety of wired and
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`wireless approaches.” UA-1004 at 6:34-37. The term “local computers” and
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`“PDAs,” as used by Mault, includes “all computing devices, whether portable or
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`stationary,” such as “electronic books, laptop and handheld computers, cellular
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`phones, pagers, desktop computers, and wearable computers.” UA-1004 at 6:46-51.
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`Information uploaded to a local computer can then be further annotated and analyzed
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`with tables and graphs, as shown in Figure 5, below. See, e.g., UA-1004 at 9:30-52.
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`28. Mault therefore discloses the fundamental features of the ‘345 Patent claims.
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`The software for each monitoring device tracking a user’s daily caloric balance is a
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`journal. Entries are made in the journal by the user to record an activity performed or
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`a food consumed. This information may take the form of voice and/or may take the
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`form of images. The user may then upload the information to a personal computer at
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`a later time.
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`29. DeLorme is U.S. Patent No. 6,321,158. The patent lists David M. DeLorme,
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`Keith A. Gray, Gordon Autry, and Keith A. Moulton as its inventors. It is titled
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`“Integrated Routing/Mapping Information,” was filed on August 31, 1998, and issued
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`on November 20, 2001.
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`30. The alleged invention disclosed by DeLorme sets out to address numerous
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`problems that apparently existed in the field of electronic travel planning and
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`recording. For example, DeLorme cites to limitations of existing routing software,
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`including the fact that recommended travel routes and itineraries were pre-determined
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`by travel editors and therefore limited in number. See UA-1005 at 2:59-65, 3:5-10.
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`Other alleged problems of the then-existing technology were the limited graphical and
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`interactive aspects of personal GPS navigation devices. See UA-1005 at 3:38-47, 3:62-
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`67. To solve these problems, DeLorme discloses a customizable and travel-related
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`mapping, routing, positional tracking, and annotating system implemented on a
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`desktop and handheld device.
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`31. Specifically, DeLorme discloses an “Integrated Routing/Mapping Information
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`System (IRMIS),” which includes a desktop computer application that can link to
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`“handheld organizer, personal digital assistant (PDA) or ‘palmtop’ devices.” UA-1005
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`at Abstract. DeLorme also discloses that the IRMIS includes a geographical
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`information system (GIS), which is a database of geographically locatable objects or
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`points of interest (POIs) that are tied to geographical coordinates such as longitude
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`and latitude. See UA-1005 at 6:7-31. With the desktop application disclosed by
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`DeLorme, a user can conduct travel planning through an interface that includes
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`electronic maps and interactive media regarding various POIs and that permits
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`selection of travel origin, travel destination, and desired waypoints between the travel
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`origin and travel destination. See UA-1005 at 6:33-49. In this way, the IRMIS
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`disclosed by DeLorme can calculate travel routes. See UA-1005 at 6:50-49.
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`32. According to DeLorme, the maps, routes, and POIs of a planned trip may be
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`converted for download to, and use on, a PDA. See UA-1005 at 6:50-63, 13:9-10
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`(“IRMIS facilitates use of the PDA to display map, route and point information ….”).
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`DeLorme discloses that the PDA may be used in conjunction with a detachable or
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`integrated GPS receiver. See UA-1005 at 5:56-62, 13:59-64. When joined with a GPS
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`receiver, the PDA may also display the user’s real-time position on a map, travel
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`direction, speed, elevation, and directions. See UA-1005 at 13:9-11, 13:22-31, 13:39-
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`45, 14:16-20, Figs. 1A2, 1A3. DeLorme also teaches that the GPS and PDA
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`combination can track the user’s real-time position over time, so that the user’s trip is
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`recorded and can be uploaded at a later time to the desktop. See UA-1005 at 10:47-55,
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`13:22-31.
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`33. The GPS and PDA combination disclosed by DeLorme also permits a user to
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`create text and image entries associated with their trip. For example, “the user can
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`‘mark’ particular locations, recording exact geographic coordinates (e.g., lat/long), and
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`make related notes or text annotations using the stylus or equivalent.” UA-1005 at
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`12:40-44. See also UA-1005 at 25:50-56 (“The ‘Mark List’ screen shown in FIG. 1A4(e)
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`allows the user to page through and annotate ‘marks’ which are records of particular
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`lat/longs.”). In addition to these annotated marks, DeLorme discloses that the GPS
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`and PDA combination can be linked with “another device … such as a digital
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`camera” such that the “IRMIS can be used to provide location and/or time/date
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`‘stamps’ on digital photos, which in turn can be imported and processed by the
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`IRMIS desktop ….” UA-1005 at 14:9-16. See also UA-1005 at 25:50-56 (“‘Mark List’
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`entries can relate to another device, such as a digital camera e.g. for purposes of
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`recording and stamping the date, time and exact lat/long at which one or more digital
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`photos are taken.”). As disclosed by DeLorme, these text and image entries can be
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`tagged with date, time and location: “IRMIS PDA/GPS devices facilitate marking
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`locations, tracking or logging ‘breadcrumbs’ or series of points representing actual
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`travel paths, plus date/time/lat-long stamping of user annotations and/or digital
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`photos made in conjunction with the PDA/GPS.” UA-1005 at 64:34-38.
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`34. Accordingly, DeLorme discloses fundamental features claimed by the ‘345
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`Patent. Specifically, the IRMIS embodied on the GPS and PDA combination taught
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`by DeLorme can serve as a record, or journal, of the user’s travels. The user can
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`input text entries associated with their trip and tag photos to that trip as well. This
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`information is further stamped with the date and time it was recorded. This
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`information can then be uploaded to a personal computer for further review and
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`analysis.
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`35. It would have been obvious to a person of ordinary skill in the art to combine
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`the features and functions disclosed by DeLorme with those disclosed by Mault. As
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`discussed below, each reference discloses advantages associated with portable
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`electronic devices that are aimed at tracking personal information about a user,
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`whether it is travelling, exercising, or dieting. Further, the portable electronic devices
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`respectively disclosed by Mault and DeLorme share many similarities that would
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`suggest combination to a person of ordinary skill. The complementary nature of the
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`references is apparent from the fact that Mault discloses a portable device, such as a
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`PDA, that may be used in conjunction with a GPS receiver, whereas DeLorme
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`primarily discloses a GPS that may be used in conjunction with a PDA. Put another
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`way, Mault discloses the use of a well-known device (a GPS receiver) and DeLorme
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`provides additional detail as to the specific capabilities and uses of that well-known
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`device.
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`36. To illustrate, both references disclose portable electronic devices for
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`monitoring and logging information about a user. Specifically, Mault teaches that a
`
`PDA can be used to record a user’s location over time. See, e.g., UA-1004 at 8:47-53
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`(“… the body activity monitor 80 includes a GPS antenna ….”; “In this embodiment,
`
`the device uses the GPS signals to periodically or continuously determine the location
`
`of the subject.”), 8:57-61 (“The position and time data … are stored to memory”),
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`9:42-51 (“The software may graph out the route followed by the subject, as shown in
`
`FIG. 7.”), 18:7-19 (“For example, the monitoring device may be a PDA that includes
`
`… a body activity monitor.”). DeLorme also teaches that a PDA can be used to
`
`record a user’s location over time. See, e.g., UA-1005 at Abstract (“The IRMIS also
`
`enables the user to … record specific locations and/or log actual travel routes, using
`
`GPS position information”), 10:47-55, 13:22-31.
`
`37. In addition, both Mault and DeLorme teach that a user may log time-stamped
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`information about happenings, and optionally photographs, with these portable
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`electronic devices. See, e.g., UA-1004 at 5:10-14 (“… additionally the monitoring
`
`device may include a video recording system such as a miniaturized camera. The
`
`subject may then photograph what was consumed ….”), 15:55-16:4 (“… following a
`
`meal, the subject may record ‘large salad, low fat ranch dressing, iced tea.’”), 16:63-
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`17:3 (“… audio or video recording may also be used to note exercise conducted.”);
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`UA-1005 at 12:40-44 (“the user can ‘mark’ particular locations, recording exact
`
`19
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`
`
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`UA-1003.019
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`
`
`
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`geographic coordinates (e.g., lat/long), and make related notes or text annotations
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`using the stylus or equivalent.”), 14:9-16 (“IRMIS can be used to provide location
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`and/or time/date ‘stamps’ on digital photos ….”). Mault and DeLorme both teach
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`that such information, including a user’s GPS tracks, can be later uploaded to a
`
`personal computer for further review and analysis. See, e.g., UA-1004 at 9:21-29
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`(“Periodically, … the subject transfers data from the monitoring device 84 to a local
`
`or remote computing device ….”); UA-1005 at 10:47-55 (“… map, route, or point
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`information recorded and/or recorded at remote locations on the PDA/GPS
`
`component of IRMIS can be displayed, incorporated and otherwise processed by the
`
`more fully articulated desktop GIS ….”)).
`
`38. There are no technical barriers preventing a combination of the Mault and
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`Delorme disclosures. Mault specifically teaches that the disclosed system can use a
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`GPS receiver. The specific type of GPS device is a matter of simple design choice.
`
`Indeed, given that DeLorme GPS devices were on the market at the time the ‘345
`
`Patent application was filed, a person of ordinary skill in the art would have
`
`recognized that the teaching of the DeLorme patents, which are directed to those
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`devices, would have applicability to the Mault system. The similarities of the devices
`
`and features disclosed by Mault and DeLorme would have encouraged a person of
`
`ordinary skill in the art to consider them both for purposes of combination.
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`
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`
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`20
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`UA-1003.020
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`
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`39. The different features disclosed in DeLorme are complementary to the Mault
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`system, such that a person of ordinary skill would recognize the advantages of
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`incorporating features taught by DeLorme into the portable electronic device
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`disclosed by Mault. For example, DeLorme expressly discloses stamping entered
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`information (i.e., a user marking his or her current location with a photograph or
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`written annotation) with the current date. See, e.g., UA-1005 at 64:32-38 (“IRMIS
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`PDA/GPS devices facilitate marking locations, tracking or logging ‘breadcrumbs’ or
`
`series of points representing actual travel paths, plus date/time/lat-long stamping of
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`user annotations and/or digital photos made in conjunction with the
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`PDA/GPS.” (emphasis added)). Date-stamping was a well-known feature that would
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`be particularly advantageous in the portable electronic device of Mault to facilitate the
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`device’s ability to “display information from previous days showing caloric balance
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`for individual days or weeks, etc.” UA-1004 at 19:29-31 (emphasis added).
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`Further, a person of ordinary skill would not be dissuaded from tacking on this useful
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`feature to Mault’s device as the combination would not impose an undue
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`technological challenge, require unknown methods or processes to implement, or
`
`impair the functionality of the device. Rather, because Mault already discloses a
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`“timer that outputs a time indicative signal for use in time stamping” (UA-1004 at
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`5:40-43), a person of ordinary skill in the art would recognize that implementing date
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`
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`21
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`UA-1003.021
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`
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`
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`stamping would simply require using a timer or clock that additionally reported the
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`date and recording the reported date with the stored entries.
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`40. Another exemplary advantage of DeLorme that is applicable to Mault is the
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`ability to provide route guidance. UA-1005 at Abstract (“Maps and related route
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`information are configured with differential detail and levels of magnitude. Used in
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`the field, in conjunction with GPS receiver, the PDA device is configured to display
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`directions, text and map formats, the user's current position, heading, speed,
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`elevation, and so forth.”). DeLorme is but one example of how route guidance on a
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`portable electronic device was well known. Another example is the Garmin NavTalk,
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`which combined a mobile phone with GPS-enabled route guidance. See UA-1008.032
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`(describing graphical navigation features showing the user’s location in relation to the
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`desired route of travel). A person of ordinary skill in the art would recognize that
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`Mault could also be adapted to include this well-known feature and that this
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`adaptation would not pose unreasonable technological challenges or require unknown
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`methods to implement. Further, a person of ordinary skill would be motivated to
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`combine the well-known route guidance feature of DeLorme with the Mault system.
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`To illustrate, Mault already discloses a computing device that presents a graphical map
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`showing the user’s routes as tracked by the GPS receiver. See UA-1004 at 6:3-5
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`(“FIG. 7 is a view of a street level map illustrating a running route as tracked by the
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`activity monitoring portion of one embodiment of the present invention”), 9:49-51,
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`22
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`UA-1003.022
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`Fig. 7. It would therefore be logical, and extremely useful, to extend this functionality
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`to provide well-known route guidance so that the user could view his or her position
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`on the map in real-time. This would be particularly advantageous for a user in need
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`directions for unfamiliar routes and neighborhoods when out on a run. Thus, it
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`would have been obvious to a person of ordinary skill in the art to combine Mault and
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`DeLorme because the disclosed features and functionality are complementary, with
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`Mault disclosing the use of GPS receivers and DeLorme merely providing additional
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`details concerning the functionality of such GPS devices.
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`41. In my opinion, the following claims of the ’345 Patent are invalid over Mault in
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`view of DeLorme for the following reasons.
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`1.a. A portable electronic journal configured to be worn or carried by a user
`comprising
`42. A journal is simply a record of happenings over time. Mault discloses an
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`activity and dieting “monitoring device,” which comprises a portable electronic
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`journal configured to be worn or carried by the user. See, e.g., UA-1004 at 1:23-25,
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`3:34-62, 4:48-5:39, 6:66-7:1, Fig. 1. The monitoring device “includes a body activity
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`monitor for monitoring the body activity of the subject” and “a consumption
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`notation control for use by the subject to indicate when the subject consumes food.”
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`UA-1004 at 3:34-36, 4:48-51. See UA-1004
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