throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
`
`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
`
`
`DECLARATION OF JOSEPH A. PARADISO
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`
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`I, Joseph A. Paradiso, make this declaration in connection with Petitioner’s
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`Reply to Patent Owner’s Response submitted by Petitioner for the inter partes
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`review of U.S. Patent No. 8,092,345 (“the 345 Patent”), IPR2015-000698. All
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`statements herein made of my own knowledge are true, and all statements herein
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`made based on information and belief are believed to be true. I am over age 21
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`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
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`UA-1011.001
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`PUBLIC VERSION
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`

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`
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`herein are my own, and I have no stake in the outcome of this proceeding or any
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`related litigation or administrative proceedings.
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`I.
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`Incorporation by Reference
`175.
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`Unless otherwise provided below, I hereby incorporate by reference
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`my declaration made in connection with the Petition to institute an inter partes
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`review on the 345 Patent (“February 5, 2015 Declaration”). UA-1003.
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`II. Claim Interpretation
`176.
`In my February 5, 2015 Declaration, I offered an opinion that the term
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`“common file format” would be understood by persons of ordinary skill in the art
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`to mean “any well-known or standardized format that permits easy viewing or
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`printing with a computer, such as a personal computer.” UA-1003 at ¶ 17. I
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`understand that the Patent Trial and Appeal Board (the “Board”) disagreed and
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`preliminarily found that the term “common file format” should be given its plain
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`and ordinary meaning. Paper 10 at 5-6. The analysis and conclusions contained
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`herein and in my February 5, 2015 Declaration remain the same under either
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`interpretation of the term “common file format.”
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`III. Unpatentability in View of Patent Owner’s Response and the
`Accompanying Exhibits
`177.
`
`I have reviewed Patent Owners adidas AG’s Response to Petition for
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`Inter Partes Review and Exhibits 2001 – 2024. My analysis and conclusions
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`below are in response to these materials.
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`2
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`UA-1011.002
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`A. A Person of Ordinary Skill in the Art Would Have Been
`Motivated to Combine the Teachings of Mault and DeLorme to
`Render Obvious Claims 1-3, 6-11, 15-7, and 20 of the 345 Patent
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`178.
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`In my February 5, 2015 Declaration, I opined how the combination of
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`Mault and DeLorme would render obvious at least claims 1-3, 6-11, 15-18, and 20
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`of the 345 Patent. Patent Owner disagrees with this analysis by asserting that: (1)
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`the Petitioner mischaracterizes Mault’s disclosure of a “PDA that includes or
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`communicates with a body activity monitor” (UA-1004 at 18:8-10) (Paper 20 at 7-
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`9); (2) Mault and DeLorme are directed to different needs of a user and that
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`DeLorme teaches away from a combination with Mault (Paper 20 at 9-14); (3) I
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`was a not a person of ordinary skill in the art during the relevant time period
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`because I never worked on a device that incorporated a GPS receiver in my
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`professional capacity (Paper 20 at 11-12); and (4) Mault’s disclosed system did not
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`need any improvement. I address each of these arguments, below.
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`1. Mault Teaches That a PDA Can Be Used to Record a User’s
`Location Over Time
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`179.
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`In describing the reasons to combine Mault and DeLorme, I noted the
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`similarities shared by these two references, including that they “both … disclose
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`portable electronic devices for monitoring and logging information about a user.”
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`UA-1003 at ¶ 36. Patent Owner does not specifically contest this statement and
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`instead focuses only on Mault’s disclosure that the portable monitoring device can
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`be, among other things, a PDA. See UA-1004 at 18:7-10 (“The monitoring device
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`3
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`UA-1011.003
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`according to the present invention may take other forms. For example, the
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`monitoring device may be a PDA that includes or communicates with a body
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`activity monitor.”). Specifically, Patent Owner argues that although Mault’s PDA
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`can include or communicate with a body activity monitor, such a body activity
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`monitor cannot be a GPS receiver; rather, Patent Owner asserts that the PDA’s
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`body activity monitor can only be an accelerometer. Paper 20 at 7-9, 15. It is my
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`opinion that this argument contradicts the plain teachings of Mault.
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`180.
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`Patent Owner and Dr. Michalson’s argument effectively attempts to
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`rewrite Mault’s disclosure. Whereas Mault states that “the monitoring device may
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`be a PDA that includes or communicates with a body activity monitor” (UA-1004
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`at 18:8-10), Patent Owner and Dr. Michalson interpret this statement as “the
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`monitoring device may be a PDA that includes or communicates with an
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`accelerometer only.” Patent Owner and Dr. Michalson also interpret “[t]he PDA
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`may have an accelerometer built in or interconnected therewith” (UA-1004 at
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`18:10-11) as “[t]he PDA only has an accelerometer built in or interconnected
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`therewith.” Both Patent Owner and Dr. Michalson fail to explain why a person of
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`ordinary skill in the art would read Mault’s otherwise clear disclosure in such a
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`limited fashion.
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`181.
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`Patent Owner also asserts that Mault discloses a GPS-only
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`embodiment and a separate PDA embodiment that are somehow completely
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`4
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`UA-1011.004
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`divorced from each other and the remainder of the specification. Specifically,
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`Patent Owner examines a portion of the specification from column 8, line 42, to
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`column 12, line 11, which discusses capabilities of using GPS in its invention, and
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`Patent Owner concludes that “Mault does not teach that this embodiment takes the
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`form of a PDA.” See Paper 20 at 7. In my opinion, Mault’s disclosure is not so
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`limited.
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`182.
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`Instead, Mault describes throughout the specification that the
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`monitoring device, with or without using GPS, can take various forms, including as
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`a PDA. For example, looking at the figure illustrating the “GPS Version of
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`Monitor” focused on by Patent Owner, shown below, this schematic does not
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`disclose the particular form of the monitoring device (e.g., whether it is a phone,
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`belt-mounted, wrist-worn, etc.); it only shows a representation of the monitoring
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`device. See UA-1004 at 8:45-61 (describing the representative monitoring device
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`84 with several components, including different types of body activity monitors
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`(e.g., 80, 105, 109, 114), manual input 110, and communication transceiver 98).
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`See also UA-1004 at Fig. 6 (illustrating a representative monitoring device 84 that
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`includes GPS and other body activity monitors), 9:21-24.
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`5
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`UA-1011.005
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`UA-1004, Figure 4
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`183.
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`In my opinion, to understand what form the monitoring device of
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`Figure 4 (and indeed other embodiments) can take, a person of ordinary skill in the
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`art would, upon reading Mault find that it broadly describes particular forms
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`throughout the specification and does not state that it is limiting the form to any
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`particular embodiment. See, e.g., UA-1004 at 8:47-51 (“… the subject wearing or
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`carrying the monitoring device 84 ….”), 9:1-2 (“Some or all of the CPU
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`functionality may be in the monitoring device 84 ….”), 10:46-48 (“… in some
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`6
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`UA-1011.006
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`embodiments of the present invention, the monitoring device includes more than
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`one activity-related monitor.”), 11:13-14 (“As another alternative, many pieces of
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`exercise equipment include their own monitoring device.”), 12:12-14 (“… an
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`additional embodiment of a monitoring device according to the present invention is
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`generally shown at 120.”), 15:44-59 (describing audio/video input 95 in Figure 4),
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`16:11-13 (“In one embodiment of the present invention, the monitoring device 84
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`includes wireless communication, such as a cellular communication, or as a part of
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`a cellular telephone.”), 16:26-33 (“[digital still and motion camera] capability may
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`be incorporated into the monitoring device according to the present invention
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`….”), 17:55-57 (“… a belt-mounted embodiment of a monitoring device according
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`to the present invention is generally shown at 160.”). Therefore, when reading that
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`“[t]he monitoring device according to the present invention may take other
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`forms,” it is my opinion that a person of ordinary skill in the art would understand
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`that Mault’s disclosure that “the monitoring device may be a PDA” applies to any
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`of the monitoring devices described throughout the specification, including the
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`“GPS Version of the Monitor.” UA-1004 at 18:7-10 (emphasis added).
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`Accordingly, it is my opinion that to a person of ordinary skill in the art Mault
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`discloses that the monitoring device which has GPS capabilities can take the form
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`of a PDA.
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`7
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`UA-1011.007
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`184.
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`Finally, Patent Owner argues that Mault discloses three “separate”
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`embodiments of the body activity monitor (i.e., a heart rate monitor, an
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`accelerometer, and a GPS receiver), and that therefore “the PDA embodiment …
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`necessarily is the accelerometer embodiment of Mault, and not the GPS
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`embodiment.” Paper 20 at 8. I disagree. Mault describes numerous embodiments,
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`including monitoring devices with both a motion sensor and a GPS: “if the
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`monitoring device according to the present invention includes more than one body
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`activity monitor, such as heart rate sensor or motion sensor in addition to the
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`GPS ….” UA-1004 at 13:31-37 (emphasis added); see also UA-1004 at 10:43-66
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`(describing a GPS and heart rate monitor combination), 13:37-40, Fig. 4 (showing
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`a monitoring device with a GPS antenna 82, respiration sensor 105, heart rate
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`sensor 109, and motion sensor 114), Fig. 6. Accordingly, it is my opinion that a
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`person of ordinary skill in the art reading Mault would understand that it discloses
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`a PDA working with one or more types of body activity monitors described in the
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`specification, including a GPS receiver.
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`2.
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`A Person of Ordinary Skill in the Art Would Have Been
`Motivated to Combine Mault and DeLorme
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`185.
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`As stated in my February 5, 2015 Declaration, it is my opinion that a
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`person of ordinary skill in the art would have combined Mault and DeLorme
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`because, inter alia, “Mault discloses the use of a well-known device (a GPS
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`receiver) and DeLorme provides additional detail as to the specific capabilities and
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`8
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`UA-1011.008
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`uses of that well-known device.” UA-1003 at ¶ 35. Patent Owner disagrees with
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`this position, arguing that a person of ordinary skill would not have combined
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`these references because Mault and DeLorme are allegedly directed to different
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`needs of a user, and because DeLorme teaches away from a combination with
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`Mault. Paper 20 at 9-14. I disagree with Patent Owner’s analysis.
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`186.
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`The Mault and DeLorme disclosures share common goals. Mault is
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`not merely directed to “a user that is simply using a GPS receiver to receive
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`position points for evaluating athletic performance,” as Patent Owner claims.
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`Paper 20 at 10. It is more broadly directed to tracking a user’s activities related to
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`caloric balance (see, e.g., UA-1004 at 1:23-25), such that it can, among other
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`things, track a user’s location over time (see, e.g., UA-1004 at 6:3-8, 8:51-53,
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`9:35-37, 10:25-28, Figs. 5, 7, 8), plot that location on a map (see, e.g., UA-1004 at
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`10:49-52, Fig. 7), provide the user’s speed and location (see, e.g., UA-1004 at
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`9:59-61), and note or mark where the user engaged in certain activities such as
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`eating or exercising (see, e.g., UA-1004 at 13:59-14:2, 14:35-39, 15:16-18, 16:28-
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`35). Similarly, DeLorme’s system is not just directed to “a user that is using a
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`GPS receiver in combination with desktop mapping application to provide route
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`guidance for travel purposes ….” Paper 20 at 10. Like Mault, DeLorme is also
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`directed to a user who wants to track their location over time (see, e.g., UA-1005 at
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`13:22-31, 13:39-45), plot that location on a map (see, e.g., UA-1005 at 13:22-31,
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`9
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`UA-1011.009
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`13:39-45), know their speed (see, e.g., UA-1005 at 13:22-31, 13:139-45), and note
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`or mark certain locations (see, e.g., UA-1005 at 12:40-44, 14:9-16, 25:50-56,
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`64:34-38). Therefore, it is my opinion that Mault and DeLorme indeed are
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`directed to common and compatible subject matter.
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`187.
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`DeLorme also does not teach away from combining its disclosures
`
`with those of Mault. Patent Owner points to a portion of DeLorme’s specification
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`reciting a product warning that the “Solus Pro should not be used in automatic
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`navigation or guidance systems or for any purpose requiring precision
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`measurement of distance or direction.” Paper 20 at 12 (citing UA-1005 at Fig.
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`1A6-5). But given that the remainder of DeLorme’s specification teaches, among
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`other things, using GPS for measuring distance and direction of a travelling person,
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`it is my opinion that this product warning alone would not be sufficient to persuade
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`a person of ordinary skill in the art to disregard those teachings.
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`188.
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`Further, it is my opinion that persons of ordinary skill in the art
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`implementing the GPS-related aspects of Mault’s or DeLorme’s disclosures would
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`have known about selective availability, and Patent Owner’s focus on this product
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`warning overlooks that fact. As Patent Owner’s expert Dr. Michalson explained
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`under oath in a related proceeding: “… selective availability … was a mechanism
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`for reducing the achievable accuracy of the GPS receiver. There was a period of
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`time that the military was concerned that the GPS system could be used against us,
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`10
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`UA-1011.010
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`and therefore they implemented selective availability to reduce the accuracy of a
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`civilian receiver.” UA-1012 at 15:21-16:3. He continued: “[w]ith selective
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`availability on, [a receiver’s accuracy] would be … around a hundred meter
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`extremes, but the average accuracy would be very high” (id. at 16:25-17:3),
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`whereas with selective availability off “your receiver would be three to five meter
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`accuracy, typically” (id. at 16:21-24). Finally, he attested that selective availability
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`was turned off by the U.S. government in the year 2000. Accordingly, selective
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`ability limited the accuracy and reliability of a GPS receiver when the application
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`for DeLorme (including the product warning) was filed (i.e., August 31, 1998).
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`But it is my opinion that at the time of the earliest possible priority date of the 345
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`Patent (i.e., February 20, 2001), persons of ordinary skill in the art would
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`understand that the precision of DeLorme’s system would not be hampered by
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`selective availability. See UA-1012 at 18:9-23 (testifying about his belief that
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`switching off selective availability promoted the commercial growth of GPS
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`devices and systems).
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`189.
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`Finally, Patent Owner argues that a person of ordinary skill in the art
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`would not be motivated to combine Mault and DeLorme because “the GPS
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`receiver recited by DeLorme’s system would not be useable to modify Mault’s
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`system and to achieve the invention claimed by the ‘345 patent.” Paper 20 at 14. I
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`disagree for the reasons discussed immediately above. Aside from the issue of
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`11
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`UA-1011.011
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`selective availability, Patent Owner also argues that a user on a run “will not want
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`to have to continually use scroll buttons to zoom in and out of the map display”
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`(Paper 20 at 13), but DeLorme discloses that “the addition of GPS provides
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`enhanced capabilities …., as well as user-friendly automated adjustments of
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`display variables on the PDA or handheld—including variables such as map
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`scale, level of detail, … and so forth.” UA-1005 at 13:22-31. Patent Owner also
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`suggests that a person of ordinary skill in the art would not combine Mault and
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`DeLorme because Mault is “fully operable for its intended function” (Paper 20 at
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`14); but, as I explained in my February 5, 2015 Declaration, Mault describes a
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`generic GPS receiver and DeLorme provides a specific example for use. UA-1003
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`at ¶35.
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`190.
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`As I explained in my February 5, 2015 Declaration, it is my opinion
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`that the limitations of the 345 Patent were known to persons of ordinary skill in the
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`art and their combination would have been obvious.
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`3.
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`I Was At Least a Person of Ordinary Skill in the Art as of the
`Earliest Possible Priority Date of the 345 Patent
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`191.
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`Patent Owner argues that I was not a person of ordinary skill in the art
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`at the relevant time. Paper 20 at 11. In support, Patent Owner relies on my
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`statement that I had not worked during my career on a device that directly
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`implemented a GPS receiver. See Ex. 2004 at 15:12-14. I disagree with Patent
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`Owner’s assessment. The 345 Patent claims do not even recite “GPS,” and while
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`12
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`UA-1011.012
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`claim 3 does cover a “location monitor,” this limitation has nothing to do with the
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`structure or operation of a GPS receiver in my opinion. Instead, one only needs to
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`know to tag journal entries with data provided by a conventional GPS receiver
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`(e.g., latitude and longitude). Moreover, I testified that I understood the
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`capabilities and use of GPS before the earliest possible priority date of the 345
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`Patent. Ex. 2004 at 11:8-12:1.
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`192.
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`Further, Patent Owner ignores how I, and even Dr. Michalson, define
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`a person of ordinary skill in the art. Neither definition (UA-1003 at ¶ 11, Ex. 2002
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`¶ 20) requires designing or working on devices that incorporate a GPS receiver,
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`and Patent Owner does not contest that I otherwise lack the required skillset
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`pursuant to those definitions. In fact, I was at least a person of ordinary skill in the
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`art during the relevant time.
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`B.
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`Software to Create a New Journal, to the Extent Not Disclosed by
`Mault, Would Have Been Obvious to a Person of Ordinary Skill
`in the Art
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`193.
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`Patent Owner has not rebutted my opinion that the claim limitations
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`“software with which a user interacts and creates a new journal” and “creating a
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`new journal using an interface with which the user interacts” are rendered obvious
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`in view of Mault. Instead, Patent Owner asserts that “Petitioner and Dr. Paradiso
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`have not articulated any explanation as to why a skilled person would make the
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`proposed modification to Mault’s system to require a user to ‘install, set up, or
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`13
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`UA-1011.013
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`configure that journal software for use.’” Paper 20 at 17. But my February 5,
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`2015 Declaration does in fact articulate a reason: “It was common and well known
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`before the application of the ‘345 Patent that portable electronic devices required
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`software installation and/or setup before use.” UA-1003 at ¶ 46. Patent Owner
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`does not dispute this fact. Further, my February 5, 2015 Declaration quotes
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`another reason from Mault II: “… the ability to set up a variety of fitness plans and
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`to track adherence to the plans.” UA-1007 at 6:52-7:12. Indeed, for a
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`consumption and activity tracking journal such as Mault’s, it is my opinion that a
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`person of ordinary skill in the art would be motivated to enter the user’s weight,
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`height, and other vitals, thereby setting up or creating the journal for use. See, e.g.,
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`UA-1004 at 8:60-65 (explaining that body activity data “may be correlated with
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`caloric expenditure and storage of correlated time and position date in memory, for
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`use in determining whether the subject is gaining or losing weight.”).
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`194.
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`Accordingly, it is my opinion that a person of ordinary skill in the art
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`would have readily understood that Mault could have been modified to include the
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`journal software with which the user interacts.
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`14
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`UA-1011.014
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`C.
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`Formatting Journal Entries to a Common File Format Is
`Disclosed In Mault, Or Would Have Otherwise Been Obvious In
`View Of Mault
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`195.
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`Patent Owner contends that formatting journal entries to a common
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`file format would not have been obvious to a person of ordinary skill in the art. I
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`disagree.
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`196.
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`In support of its argument, Patent Owner asserts that “Petitioner and
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`Dr. Paradiso simply assume that just because a person of ordinary skill in the art
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`would understand that some data would be stored in a common file format, a
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`person of ordinary skill would be motivated to store all data in a common file
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`format.” Paper 20 at 21 (emphasis added). But, I did not make any such
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`statement. Further, Patent Owner states that “Petitioner has identified nothing in
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`the disclosures of Mault that would lead a person of ordinary skill in the art to
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`conclude that its system would benefit from use of a common file format.” I
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`disagree. Having reviewed the Petition, Petitioner explicitly identified such a
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`motivation in Mault (see Paper 1 at 19), with which I concurred in my February 5,
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`2015 Declaration (see UA-1003 at ¶58).
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`197.
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`Patent Owner also argues that Petitioner misstates Mault’s disclosure
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`that the monitoring device (i.e., the portable journal) can communicate with a “web
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`page running on a remote server via the Internet.” UA-1004 at 6:55-57. But in my
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`opinion, Patent Owner confuses what a person of ordinary skill in the art would
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`15
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`UA-1011.015
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`understand from a disclosure of communicating data to a web page as opposed to
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`merely communicating with a server. Paper 20 at 19-20. A webpage is an
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`interface accessible to a user through a browser, whereas a remote server could be
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`simply a data store for downloads or uploads. Accordingly, in my opinion Mault’s
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`disclosure of interconnecting and communicating with a webpage (UA-1004 at
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`6:54-57) implies transmitting data to that browser-based user interface, and it is
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`further my opinion that a person of ordinary skill in the art would understand that
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`the purpose of such transmission would be to view or otherwise interact with the
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`monitoring device’s data (i.e., journal entries). I believe that Patent Owner also
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`ignores the context of Mault’s disclosure concerning communicating with the
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`webpage. As is apparent from the entire paragraph, Mault is describing
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`alternatives and modifications to the role of local computer 22 and PDA 24 “[f]or
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`purposes of [its] disclosure ….” See UA-1004 at 6:46-65. Therefore, it is my
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`opinion that a person of ordinary skill in the art reading that the user of Mault’s
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`system can, for example, “transfer[] data from the monitoring device 84 to a local
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`or remote computing device” for purposes of “analysis and processing” (UA-
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`1004 at 9:21-29 (emphasis added)) would understand that this includes a web site
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`running on a remote server. And as stated in my February 5, 2015 Declaration, to
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`the extent this disclosure does not teach this limitation, a person of ordinary skill in
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`16
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`UA-1011.016
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`the art would have found it obvious, and indeed beneficial, to format such data in a
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`common file format, such as HTML.
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`198.
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`Finally, Patent Owner argues that Mault’s data can be saved on a
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`personal computer in a proprietary format, but in my opinion this assertion does
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`not diminish the fact that formatting data in a common file format would have been
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`obvious. It is undisputed that formatting data in either common or proprietary
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`formats by 2001 was readily known, identifiable, and predictable solution. See
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`UA-1003 at ¶¶ 57-58. Even for embedded systems, it was also standard practice as
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`of the priority date of the 345 Patent to save data in a common file format. In my
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`opinion, choosing one format over another is simply a matter of common sense.
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`Accordingly, that one could adapt Mault to format data in a proprietary format
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`does not rebut my opinion that it would have been readily obvious to adapt Mault
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`to do so in a common file format. This is particularly so since there were no
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`technical barriers that would have prevented or dissuaded a person of ordinary skill
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`in the art from formatting data in a common file format. To the contrary, it is my
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`opinion that doing so would have been readily within the expertise of a person of
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`ordinary skill in the art.
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`17
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`UA-1011.017
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`D.
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`199.
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`Patent Owner Has Not Overcome the Evidence Showing That the
`Limitations of Claim 6-8 Would Have Been Obvious
`I disagree with Patent Owner’s positions regarding claims 6-8.1
`
`Accordingly, it is my opinion that claims 6-8 of the 345 Patent would have been
`
`obvious to a person of ordinary skill in the art.
`
`200.
`
`Patent Owner states that “Petitioner has relied exclusively on the
`
`combination of Mault and DeLorme as the basis for its obviousness argument with
`
`respect to these database limitations.” Paper 20 at 23. Having reviewed the
`
`Petition, I disagree. Both the Petition and my February 5, 2015 Declaration
`
`contain analysis showing that the limitation of claim 6 would have been obvious
`
`over Mault, and also over Mault in view of DeLorme. For example, as I stated in
`
`my February 5, 2015 Declaration, which the Petition cites, it is my opinion that “it
`
`would have been obvious to one of ordinary skill in the art that Mault could be
`
`adapted to include a database of entries with which a journal may be tagged.” UA-
`
`1003 at ¶ 66; see also Paper 1 at 21. Separately, I opined, as cited by the Petition,
`
`that “incorporating a database of entries with which a journal entry may be tagged
`
`into a portable electronic journal would have been obvious to one of ordinary skill
`
`
`1 I note that Patent Owner asserts that claims 6, 7, and 8 describe the claimed
`
`journal as comprising “various databases.” Paper 20 at 23. But, these claims only
`
`require a journal comprising a single database. See UA-1001 at claims 6-7.
`
`
`
`18
`
`UA-1011.018
`
`

`
`
`
`in the art over Mault in view of DeLorme.” UA-1003 at ¶ 67; see also Paper 1 at
`
`22. Accordingly, Patent Owner has not rebutted my opinion that the limitation of
`
`claim 6 would have been obvious over Mault to a person of ordinary skill in the
`
`art.
`
`201.
`
`Patent Owner also disagrees that DeLorme teaches that a portable
`
`electronic journal can include a database. I disagree. As cited in my February 5,
`
`2015 Declaration, DeLorme discloses that “data coordination or integration
`
`between IRMIS homebase and IRMIS portable(s) comprises optional, controllable
`
`one-way or two-way synchronization of selected component databases, e.g.
`
`maps, text directions, address books, route depictions, POI or point information,
`
`digital photo data, and so forth.” UA-1005 at 72:26-38 (emphasis added). See
`
`UA-1003 at ¶ 66. In my opinion, two-way synchronization means that files are
`
`copied from the IRMIS homebase to the IRMIS portable device and vice versa
`
`such that data in each location is the same. It is therefore my opinion that
`
`DeLorme teaches that component databases, including for points of interest, digital
`
`photos, etc., can be on both the IRMIS homebase and the IRMIS portable device
`
`(e.g., the portable electronic journal).
`
`202.
`
`Even if DeLorme does not disclose a database on a portable electronic
`
`journal, the limitation of claim 6 would still have been obvious in my opinion. As
`
`I have previously explained, Mault discloses, for example, storing flags, modes,
`
`
`
`19
`
`UA-1011.019
`
`

`
`
`
`and prior meals on the portable device with journal entries. See UA-1003 at ¶¶ 63-
`
`65. Assuming for the sake of argument that a limitation of claim 6 is missing, it is
`
`my opinion that only the limitation concerning the structure of the data stored on
`
`the portable device—i.e., a database—is missing. DeLorme’s disclosure of a
`
`database, regardless of where that database is located, teaches that structure and
`
`therefore in my opinion renders the limitation obvious to a person of ordinary skill
`
`in the art.
`
`203.
`
`Further, Patent Owner argues that Mault’s disclosure of a database on
`
`a “computing device” cannot be the database of the portable electronic journal,
`
`because the claims of the 345 Patent also require a separate personal computer.
`
`See Paper 20 at 24-25. I believe that Patent Owner again overlooks details of
`
`Mault’s disclosure. In my opinion, Mault clearly states that the computing device
`
`can be portable or stationary, and it also clearly states that a portable computing
`
`device, a monitoring device, and a personal computer can all be used. See UA-
`
`1004 at 6:46-54 (“Communication may be provided between the monitoring device
`
`10 and the PDA 24, with the PDA 24 later communicating with the local computer
`
`22 ….”); see also UA-1003 at ¶ 65. Therefore, it is my opinion that Mault’s
`
`database may exist on a portable computing device that is part of the electronic
`
`journal (i.e., the PDA 24), and it can upload journal entries to a separate personal
`
`
`
`20
`
`UA-1011.020
`
`

`
`
`
`computer (i.e., local computer 22). See also UA-1004 at 18:7-10 (“… the
`
`monitoring device may be a PDA ….”).
`
`204.
`
`Finally, Patent Owner argues that my February 5, 2015 Declaration
`
`fails to explain why the limitation of claim 6 would have been obvious over Mault
`
`in view of DeLorme, noting only that it cannot be shown that incorporating a
`
`database into a portable device disclosed by Mault would have been nothing more
`
`than a “non-consequential design choice.”2 Paper 20 at 25-26. In support, both
`
`Patent Owner and Dr. Michalson point only to a passage of Mault saying that
`
`different components of the monitoring device “may” reside in the computing
`
`device such that the monitoring device has little or no processing power. Paper 20
`
`at 25 (citing UA-1004 at 7:53-58). But this is just an embodiment of Mault—it
`
`does not say that Mault’s monitoring device always has little or no processing
`
`power. Indeed, Mault teaches that the monitoring device can be a PDA. See UA-
`
`1004 at 18:7-10. Furthermore, storing data in a database so that it can be indexed
`
`
`2 My February 5, 2015 Declaration also explains the limitation of claim 6 would
`
`have been obvious because“[u]sing a database would not impact the form or
`
`functioning of the monitoring device” and that “a database would have been the
`
`preferred method of storing” Mault’s data. UA-1003 at ¶ 67. Notably, neither
`
`Patent Owner nor Dr. Michalson attempt to rebut my reasoning.
`
`
`
`21
`
`UA-1011.021
`
`

`
`
`
`could be accomplished on portable devices. See UA-1003 at ¶ 66 (citing UA-
`
`1005).
`
`205.
`
`Accordingly, it remains my opinion that claim 6 would have been
`
`obvious over Mault in view of DeLorme.
`
`IV. Patent Owner’s Arguments Regarding Purported Commercial Success
`and Industry Praise Should be Given No Weight
`206.
`
`Patent Owner’s arguments regarding purported commercial success
`
`and industry praise are incorrect. In my opinion, Patent Owner has not established
`
`a nexus to tie the claims of the 345 Patent to the purported evidence of secondary
`
`indicia. Even if Patent Owner has shown a nexus, Patent Owner has not provided
`
`evidence to demonstrate commercial success or industry praise in my opinion.
`
`207.
`
`Obviousness, as I understand, is based on the scope and content of the
`
`prior art, the differences between the prior art and the claim, the level of ordinary
`
`skill in the art, and secondary indicia of non-obviousness to the extent such indicia
`
`exist. I have been informed that such secondary indicia of non-obviousness may
`
`include, for example: a long felt but unmet need in the prior art that was satisfied
`
`by the invention of the patent; commercial success or lack of commercial success
`
`of processes covered by the patent; unexpected results achieved by the invention;
`
`praise of the invention by others skilled in the art; taking of licenses under the
`
`patent by others; and deliberate copying of the invention. I also understand that
`
`there must be a relationship—or nexus—between any such secondary indicia and
`
`
`
`22
`
`UA-1011.022
`
`

`
`
`
`the invention. Accordingly, where the offered secondary consideration actually
`
`results from something other than what is both claimed and novel in the claim,
`
`there is no nexus to the merits of the claimed invention. I further understand that
`
`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determinati

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