IPR2015-01152
`Patent 8,837,144
`Declaration of Ryan White
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ACCO Brands Corporation and
`ACCO Brands USA LLC
`Petitioners
`
`v.
`
`Think Products, Inc.
`Patent Owner
`
`_______________
`
`Case IPR2015-01152
`Patent 8,837,144
`_______________
`
`DECLARATION OF RYAN WHITE
`
`ACCO Brands
`Exhibit 1021
`ACCO Brands v. Think Products
`IPR2015-01152
`
`Ex. 1001 - Page 1 of 105
`
`

`

`TABLE OF CONTENTS
`
`IV.
`
`V.
`
`I.
`II.
`III.
`
`Introduction..................................................................................................... 2
`Background and Experience........................................................................... 2
`Legal Principles .............................................................................................. 4
`A.
`Person of Ordinary Skill in the Art ...................................................... 4
`B.
`Anticipation Invalidity ......................................................................... 5
`C.
`Obviousness Invalidity......................................................................... 5
`D.
`Claim Construction............................................................................... 6
`The ’758 and ’144 Patents.............................................................................. 7
`A.
`Background and Priority Claims.......................................................... 7
`B.
`Prosecution History.............................................................................. 9
`C.
`Claims................................................................................................. 10
`D.
`Claim Construction............................................................................. 14
`E.
`Priority Benefit................................................................................... 21
`Prior Art Analysis......................................................................................... 33
`A.
`General State of the Art...................................................................... 33
`B. McDaid, U.S. Patent No. 6,360,405 (Ex. 1008) ................................ 35
`C.
`Chen, U.S. Patent No. 5,829,280 (Ex. 1009) ..................................... 44
`D.
`Cheng, U.S. Patent No. 5,447,045 (Ex. 1010) ................................... 45
`E.
`Lee, U.S. Patent No. 7,073,358 (Ex. 1012)........................................ 47
`F.
`ClickSafe Product Website Video (Ex. 1013).................................... 48
`VI. Opinions on Grounds for Inter Partes Review ............................................. 57
`A.
`Disclosure of Claim Limitations in the Prior Art............................... 58
`B.
`Ground 1: Obviousness over McDaid and Chen ............................... 93
`C.
`Ground 2: Obviousness over McDaid and Cheng ............................. 95
`D.
`Ground 3: Obviousness over McDaid and Lee.................................. 97
`E.
`Ground 4: Anticipation by ClickSafe Video (’758 patent,
`claims 1-7, 9-13, 16; ’144 patent, claims 1-11, 14-20) .............................. 100
`F.
`Ground 5: Obviousness over ClickSafe Video (’758 patent,
`claim 14; ’144 patent, claim 12)................................................................. 101
`VII. Conclusion .................................................................................................. 103
`
`Ex. 1001 - Page 2 of 105
`
`

`

`I, Ryan White, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been engaged by the Petitioner, ACCO Brands Corporation and
`
`ACCO Brands USA LLC, (“ACCO”), as an expert for the Petitioner in connection
`
`with Inter Partes Review (“IPR”) proceedings before the U.S. Patent and
`
`Trademark Office, Patent Trial and Appeal Board (“PTAB”). I am being
`
`compensated for my time at my usual hourly billing rate for consulting work. No
`
`part of my compensation depends on the outcome of these proceedings.
`
`2.
`
`I understand that these proceedings involve U.S. Patent No. 8,717,758
`
`(the “’758 patent), which issued on May 6, 2014, and U.S. Patent No. 8,837,144
`
`(the “’144 patent), which issued on September 16, 2014.
`
`3.
`
`I have been asked to provide opinions concerning the ’758 and ’144
`
`patents, and whether certain references disclose or suggest certain features in the
`
`claims of these patents. In particular this declaration addresses claims 1-7, 9-14,
`
`and 16 of the ’758 patent and claims 1-12 and 14-20 of the ‘144 patent
`
`4.
`
`A complete listing of the materials I reviewed in preparing this
`
`declaration is attached as Appendix A.
`
`II.
`
`BACKGROUND AND EXPERIENCE
`
`5.
`
`A description of my education, training, and experience is
`
`summarized below.
`
`2
`
`Ex. 1001 - Page 3 of 105
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`

`

`6.
`
`I received a B.S. in Industrial Design in 2001 from the Wentworth
`
`Institute of Technology in Boston, Massachusetts.
`
`7.
`
`From 2001 to 2004, I was employed as an Industrial Designer by Item
`
`New Product Development. My responsibilities there included aesthetic and
`
`mechanical design and development of products for use in the medical, juvenile,
`
`consumer, and industrial fields, including products such as tools for Snap-On
`
`Tools, welding equipment used for manufacturing or medical applications, and
`
`locking storage cabinets for storing microscopes.
`
`8.
`
`From 2005 to 2010 I was employed as Lead Industrial Designer and
`
`from 2010 to 2012 as Industrial Design Manager by Kensington (which is part of
`
`ACCO Brands Corporation). My responsibilities there included redeveloping four
`
`of Kensington’s six product categories with a main focus on their Security Line.
`
`This included device design and development of Kensington’s Security Line
`
`included products, including the MicroSaver® and ClickSafe® computer lock
`
`products.
`
`9.
`
`From 2012 to 2013, I was employed as Lead Industrial Designer by
`
`Speculative Product Design, LLC (Speck). My responsibilities there included
`
`leading their internal R&D team exploring methods of entry into new product lines
`
`and markets through innovative offerings, partnerships, branding, and developing
`
`or obtaining any needed technologies.
`
`3
`
`Ex. 1001 - Page 4 of 105
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`

`

`10.
`
`From 2012 to the present, I have worked as an independent design
`
`and strategy consultant, and have provided consulting services concerning design
`
`and development of strategy, product, and packaging for clients in the fields of
`
`Food & Beverage, Security, Consumer Technologies, Medical Devices, Consumer
`
`Goods, and Technology.
`
`11.
`
`Since January 2015 I have been employed by Staples, Inc. as their
`
`Senior Manager, Product Design & Innovation. My responsibilities there include
`
`management of internal resources, and developing designs for new office supply
`
`and consumer electronic products.
`
`12.
`
`I am named inventor on at least 48 issued patents and pending
`
`applications, relating to subject matters including locking devices for portable
`
`electronic devices, wearable technologies, consumer power products, water
`
`purification, and scientific and medical equipment.
`
`III. LEGAL PRINCIPLES
`
`A.
`
`13.
`
`Person of Ordinary Skill in the Art
`
`I am informed that a “person of ordinary skill in the art” (“POSA”)
`
`refers to a hypothetical person who is presumed to have known the relevant art at
`
`the time of the invention. Many factors may determine the level of ordinary skill in
`
`the art, including: (1) the type of problems encountered in the art, (2) prior art
`
`solutions to those problems, (3) the rapidity with which innovations are made, (4)
`
`4
`
`Ex. 1001 - Page 5 of 105
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`

`

`the sophistication of the technology, and (5) the educational level of active workers
`
`in the field. I understand that a POSA is a person of ordinary creativity, meaning
`
`that a POSA may employ inferences and creative steps in their work.
`
`14. A POSA for these patents would have at least an undergraduate
`
`degree in industrial design or mechanical engineering, and about two years of
`
`experience designing locking devices for portable electronic equipment such as
`
`laptop computers, or equivalent experience. I have used this definition in my
`
`analysis below.
`
`B.
`
`15.
`
`Anticipation Invalidity
`
`I understand that a patent claim is “anticipated,” and, therefore,
`
`invalid, if a single prior art reference discloses (expressly or inherently) each and
`
`every element of the claimed invention in a manner sufficient to enable a POSA to
`
`practice the invention, thus placing the invention in possession of the public.
`
`C.
`
`16.
`
`Obviousness Invalidity
`
`I understand that even if a prior art reference fails to anticipate a
`
`patent claim, the claim may nonetheless be invalid as “obvious,” if the differences
`
`between the subject matter claimed and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`POSA. I understand that several factual inquiries underlie a determination of
`
`obviousness. These inquiries include the scope and content of the prior art, the
`
`5
`
`Ex. 1001 - Page 6 of 105
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`

`

`level of ordinary skill in the art, the differences between the claimed invention and
`
`the prior art, and any objective “secondary considerations.” I understand that a
`
`combination of familiar elements according to known methods may be obvious
`
`when it does no more than yield predictable results. I also understand that common
`
`sense and ordinary creativity of one skilled in the art can be relevant to
`
`obviousness, and that a claim may be obvious if the elements of the claim are all
`
`known in the art, and if POSA would have an apparent reason to combine those
`
`elements in the fashion claimed by the patent.
`
`17.
`
`I have been informed that certain objective secondary considerations
`
`may be relevant to a determination of whether an invention was obvious. Such
`
`secondary considerations may include, e.g., (a) whether there was a long-felt and
`
`long-unmet need for the invention, (b) whether the invention achieved unexpected
`
`results, (c) the commercial success of the invention, and (d) whether the invention
`
`was copied or praised within the industry.
`
`D.
`
`18.
`
`Claim Construction
`
`I have been informed that, in an IPR, the PTAB will give the claim
`
`terms in the patents under review their “broadest reasonable interpretation” in light
`
`of the patents themselves. I understand this means that the words of the claims are
`
`analyzed from the perspective of POSA and, specifically, receive the broadest
`
`reasonable meaning POSA would give them in the context of the ‘144 and ‘758
`
`6
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`Ex. 1001 - Page 7 of 105
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`

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`patents and when the words are used as they ordinarily are used. I also understand,
`
`however, that the PTAB could determine that the inventor specifically defined a
`
`particular claim term in the patent (which I understand is referred to as
`
`“lexicography”), in which case that definition would control.
`
`IV. THE ’758 AND ’144 PATENTS
`
`A.
`
`19.
`
`Background and Priority Claims
`
`The ’758 and ’144 patents, both entitled “Locking Assembly for
`
`Electronic Tablet and Other Devices,” both relate to locking assemblies for tablet
`
`computers, smart phones, e-readers, laptop computers, and other hand-held
`
`electronic devices. Ex. 1001, ‘758 patent at 1:32-41; Ex. 1003, ’144 patent at 1:34-
`
`44. The ’144 patent is a continuation of the ’758 patent, and other than the claims,
`
`both patents have substantially identical specifications and Figs. 1-65.
`
`20.
`
`The ’144 patent was issued on September 16, 2014, and is a
`
`continuation of U.S. Application Serial No. 13/526,514, which issued as the ’758
`
`patent on May 6, 2014. The ’144 and ’758 patents also claim the priority benefit of
`
`the following applications:
`
`a.
`
`The ’758 patent is a continuation of U.S. Application Serial No.
`
`13/031,174, filed on February 18, 2011, which issued as U.S.
`
`Patent No. 8,223,488 on July 17, 2012.
`
`7
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`Ex. 1001 - Page 8 of 105
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`

`

`b.
`
`The ’488 patent is a continuation-in-part of U.S. Application
`
`Serial No. 12/657,670, filed on January 25, 2010, which issued
`
`as U.S. Patent No. 8,139,356 on March 20, 2012.
`
`c.
`
`The ’356 patent is a continuation-in-part of U.S. Application
`
`Serial No. 12/154,561, filed May 23, 2008, which issued as
`
`U.S. Patent No. 7,724,520 on May 25, 2010.
`
`d.
`
`The ’520 patent is a continuation-in-part of U.S. Application
`
`Serial No. 11/454,433, filed June 15, 2006, which issued as
`
`U.S. Patent No. 7,443,665 on October 28, 2008.
`
`e.
`
`The ’665 patent is a continuation-in-part of U.S. Application
`
`Serial No. 11/359,871, filed February 22, 2006, which issued as
`
`U.S. Patent No. 7,324,333, on January 29, 2008. The ’665
`
`patent also claims the benefit of provisional applications
`
`06/691,476, filed June 17, 2005; 06/725,333, filed October 11,
`
`2005; 06/757,737, filed January 10, 2006; and 06/783,188, filed
`
`March 16, 2006.
`
`f.
`
`The ’333 patent is a continuation-in-part of U.S. Application
`
`Serial No. 11/038,591, filed January 19, 2005, which issued as
`
`U.S. Patent No. 7,315,443 on January 1, 2008. The ’333 patent
`
`8
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`Ex. 1001 - Page 9 of 105
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`

`

`also claims the benefit of provisional applications 06/678,911,
`
`filed May 6, 2005; and 06/655,270, filed February 22, 2005.
`
`g.
`
`The ’443 patent claims the benefit of provisional applications
`
`06,626,839, filed November 10, 2004; and 06/569,561, filed
`
`May 10, 2004.
`
`21. Based on the priority claims made in the ’758 and ’144 patents, the
`
`earliest possible priority date for the claims of these patents is May 10, 2004.
`
`22. Unless another date is specified, my opinions in this declaration
`
`address what would be known and understood by POSA as of May 10, 2004.
`
`B.
`
`23.
`
`Prosecution History
`
`I have reviewed the file history of the ’758 patent (Ex. 1002) and the
`
`file history of the ’144 patent (Ex. 1004). These file histories are briefly
`
`summarized below.
`
`24. As filed on June 18, 2012, the ’758 patent included 22 claims. Ex.
`
`1002 at 1-80.
`
`25.
`
`In a first Office Action dated May 22, 2013, the Patent Office rejected
`
`all pending claims as anticipated by or obvious in view of one or more of Murray,
`
`Jr., U.S. Patent No. 5,502,989; Katoh, U.S. Patent No. 5,526,226; Geenfield, U.S.
`
`Patent No. 5,709,110; and Slow, U.S. Patent No. 5,608,605. Ex. 1002 at 873-884.
`
`9
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`Ex. 1001 - Page 10 of 105
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`

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`26.
`
`In an Amendment dated November 22, 2013, the applicant amended
`
`the pending claims to add additional limitations such as “said captive security rod
`
`partially in said at least one housing and partially out of said at least one housing
`
`during and before locking use” and “where the activation causes the locking
`
`mechanism to securely grasp the locking end” to the independent claims. Ex. 1002
`
`at 936-943.
`
`27. On December 20, 2013, the Patent Office issued a notice of
`
`allowance. Ex. 1002 at 947-955. A minor amendment was made to the
`
`specification on March 28, 2014, Ex. 1002 at 982-984, and the ‘758 patent issued
`
`on May 6, 2014.
`
`28. As filed on May 5, 2014, the ’144 patent included 20 claims. Ex. 1004
`
`at 5-77.
`
`29.
`
`In a first Office Action dated July 30, 2014, the Patent Office
`
`indicated that all claims as filed were allowable. Ex. 1004 at 883-892. The ’144
`
`patent issued on September 16, 2014.
`
`C.
`
`30.
`
`Claims
`
`The ’144 patent contains 20 claims, of which claims 1, 14, and 20 are
`
`independent. Claims 1 and 14 recite a locking assembly for securing a portable
`
`electronic device, and claim 20 recites a method for securing a portable electronic
`
`device. These independent claims read as follows:
`
`10
`
`Ex. 1001 - Page 11 of 105
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`

`

`1. [a] A locking assembly for securing a portable
`electronic device having at least one housing to a
`substantially immovable object, the locking assembly
`comprising:
`
`[b] a captive security rod having a locking end and an
`anchoring end, wherein the anchoring end is installed in
`the at least one housing to anchor the captive security rod
`thereto;
`
`[c] said captive security rod being captive partially in
`said at least one housing after installation and partially
`out of said at least one housing during and before locking
`use after installation; and,
`
`[d] a locking device with a locking mechanism, wherein
`the locking device is configured with an opening to
`receive the locking end of the captive security rod to
`activate the locking mechanism, where the activation
`causes the locking mechanism to securely grasp the
`locking end and thereby lock the installed security rod
`and portable electronic device to the locking device.
`
`14. [a] A locking assembly for securing a portable
`electronic device having at least one housing to a
`substantially immovable object, the locking assembly
`comprising:
`
`[b] a captive security rod or spike having a locking end
`and an anchoring end, said anchoring end of said captive
`security rod or spike configured for installing to the at
`least one housing by anchoring to the portable electronic
`device through the at least one housing;
`
`[c] a locking device having a lock opening to a locking
`mechanism, said locking device configured to lock to
`said captive security rod or spike upon insertion of the
`locking end of said installed security rod or spike into
`said lock opening to actuate said locking mechanism,
`therein locking said locking device to said captive
`security rod or spike; and,
`
`11
`
`Ex. 1001 - Page 12 of 105
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`

`

`[d] a cable attached to said locking device and configured
`for fastening to the to substantially immovable object
`prior to locking said locking device to said installed
`captive security rod or spike,
`
`[e] wherein said locking end of said installed captive
`security rod or spike comprises a small knob axially
`located on a distal end of said captive security rod or
`spike,
`
`[f] wherein said installed captive security rod or spike is
`positioned in a recess in the at least one housing during
`non-use, and said small knob protrudes from the at least
`one housing during non-use.
`
`20. [a] A method for securing a portable electronic
`device having a housing to a substantially immovable
`object utilizing a locking assembly, the locking assembly
`comprising a security rod or spike formed with an
`anchoring end separated axially by a protruding end, a
`locking device with an internal locking mechanism and a
`cable permanently attached to the locking device at one
`end, the method comprising acts of:
`
`[b] securely installing the anchoring end of the security
`rod or spike to the portable electronic device in the
`housing;
`
`[c] attaching an other end of the cable to the substantially
`immovable object; and
`
`[d] inserting the locking end of the security rod or spike
`into an opening in the locking device to actuate the
`internal locking mechanism and lock the locking device
`to the captive security rod or spike and, therefore, the
`portable electronic device to which it is anchored, to the
`substantially immovable object.
`
`Ex. 1003 at 19:16-33; 20:-15-40; 20:66-21:15.
`
`12
`
`Ex. 1001 - Page 13 of 105
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`

`

`31.
`
`The ’758 patent contains 16 claims, of which claims 1 and 16 are
`
`independent. Claim 1 recites a locking assembly for securing a portable electronic
`
`device; claim 16 recites a method for securing a portable electronic device. These
`
`independent claims read as follows:
`
`1. [a] A locking assembly for securing a portable
`electronic device having at least one housing to a
`substantially immovable object, the locking assembly
`comprising:
`
`[b] a captive security rod having a locking end and an
`anchoring end, wherein the anchoring end is passed
`through the at least one housing to anchor the captive
`security rod thereto;
`
`[c] said captive security rod partially in said at least one
`housing and partially out of said at least one housing
`during and before locking use; and
`
`[d] a locking device with a locking mechanism, wherein
`the locking device is configured with an opening to
`receive the locking end of the captive security rod to
`activate the locking mechanism, where the activation
`causes the locking mechanism to securely grasp the
`locking end and thereby lock the security rod and
`portable electronic device to the locking device.
`
`16. [a] A method for securing a portable electronic
`device having a horsing [sic, housing] to a substantially
`immovable object utilizing a locking assembly, the
`locking assembly comprising a captive security rod or
`spike formed with an anchoring end separated axially by
`a protruding end, said captive security rod being captive
`partially in said at least one housing and partially out of
`said at least one housing during and before locking use; a
`locking device with an internal locking mechanism and a
`cable permanently attached to the locking device at one
`end, the method comprising acts of:
`
`13
`
`Ex. 1001 - Page 14 of 105
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`

`

`[b] securedly fixing the anchoring end of the captive
`security rod or spike to the portable electronic device
`upon or through the housing;
`
`[c] attaching an other end of the cable to the substantially
`immovable object; and
`
`[d] inserting the protruding end of the captive, security
`rod into an opening in the locking device to actuate the
`internal locking mechanism and lock the locking device
`to the captive security rod and, therefore, the portable
`electronic device to which it is anchored, to the
`substantially immovable object.
`
`Ex. 1001 at 19:18-34, 20:34-54.
`
`D.
`
`32.
`
`Claim Construction
`
`In my opinion, and as discussed below, POSA would understand that
`
`the broadest reasonable interpretation of the claim terms listed below are as
`
`follows:
`
`No. Claim Term
`
`1
`
`wherein the locking device is
`configured with an opening
`to receive the locking end of
`the captive security rod to
`activate the locking
`mechanism, where the
`activation causes the locking
`mechanism to securely grasp
`the locking end and thereby
`lock the [installed] security
`rod and portable electronic
`device to the locking device
`
`’758
`Claims
`
`’144
`Claims
`
`1-15
`
`1-13
`
`Construction
`
`the locking device has an
`opening into which the
`locking end of the captive
`security rod fits, and upon
`insertion of the captive
`security rod in the locking
`device, the rod becomes
`locked in the locking
`device
`
`14
`
`Ex. 1001 - Page 15 of 105
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`

`

`No. Claim Term
`
`2
`
`3
`
`4
`
`5
`
`a locking device having a
`lock opening to a locking
`mechanism, said locking
`device configured to lock to
`said captive security rod or
`spike upon insertion of the
`locking end of said installed
`security rod or spike into said
`lock opening to actuate said
`locking mechanism, therein
`locking said locking device to
`said captive security rod or
`spike
`
`means for securing the
`locking device and, therefore,
`the captive security rod and
`portable electronic device to
`which the captive security
`rod is anchored, to a
`substantially non-movable
`object
`
`wherein the small knob that
`is captured and held by the
`locking mechanism at locking
`actuation
`
`said captive security rod is
`deployed to extend and
`protrude from any surface of
`said first housing or said
`second housing
`
`’758
`Claims
`
`’144
`Claims
`
`Construction
`
`14-19
`
`[same as term 1]
`
`2-4
`
`2-4
`
`Construe under 35 U.S.C.
`§ 112, ¶ 6
`
`Function: securing the
`locking device, the
`captive security rod, and
`the portable electronic
`device to a substantially
`non-movable object.
`
`Structure: includes a
`cable or lanyard.
`
`wherein the knob is
`captured and held by the
`locking mechanism at
`locking actuation
`
`6
`
`16
`
`10
`
`8
`
`the captive security rod
`extends out of the housing
`
`15
`
`Ex. 1001 - Page 16 of 105
`
`

`

`No. Claim Term
`
`6
`
`[said captive security rod]
`operates to extend in a
`deployed position out of a
`surface of said second
`housing.
`
`’758
`Claims
`
`’144
`Claims
`
`11
`
`9
`
`Construction
`
`the captive security rod
`extends out of the second
`housing
`
`7
`
`pin lock
`
`14
`
`12
`
`8
`
`9
`
`The locking assembly as set
`forth in claim 2
`
`base plate
`
`13
`
`12
`
`10
`
`a lock with a mechanism
`that uses pins of varying
`lengths to prevent the
`lock from unlocking
`without the correct key
`
`The locking assembly as
`set forth in claim 3
`
`a security plate to which a
`computer or other object
`is attached
`
`33.
`
`Term Nos. 1 and 2—Independent claim ’758/1 recites wherein the
`
`locking device is configured with an opening to receive the locking end of the
`
`captive security rod to activate the locking mechanism, where the activation causes
`
`the locking mechanism to securely grasp the locking end and thereby lock the
`
`security rod and portable electronic device to the locking device. Independent
`
`claim ’144/1 recites an identical term, except that this claim also includes the word
`
`installed before “security rod,” as indicated in brackets in the table above.
`
`Independent claim ’144/14 recites similar language, a locking device having a lock
`
`opening to a locking mechanism, said locking device configured to lock to said
`
`16
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`Ex. 1001 - Page 17 of 105
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`captive security rod or spike upon insertion of the locking end of said installed
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`security rod or spike into said lock opening to actuate said locking mechanism,
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`therein locking said locking device to said captive security rod or spike.
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`34.
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`The feature of the invention recited in Terms 1 and 2 is not depicted in
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`any of the patent Figures 1-65. However, based on the claim language, POSA
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`would understand that the broadest reasonable interpretation of each of these terms
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`would be the same, as indicated above. Specifically, Terms 1 and 2 should be
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`construed as follows: the locking device has an opening into which the locking end
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`of the captive security rod fits, and upon insertion of the captive security rod in the
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`locking device, the rod becomes locked in the locking device.
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`35.
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`Term 3—Claims ’758/2-4 and ’144/2-4 recite means for securing the
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`locking device and, therefore, the captive security rod and portable electronic
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`device to which the captive security rod is anchored, to a substantially non-
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`movable object.
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`36.
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`I have been informed that this term should be interpreted as a means-
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`plus-function term under 35 U.S.C. § 112, ¶ 6, and that accordingly the term reads
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`on a device that performs the recited function of the term, if performed by the
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`structure, material, or acts described in the patent specification for performing the
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`recited function. The function recited in the term issecuring the locking device
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`and, therefore, the captive security rod and portable electronic device to which the
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`17
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`Ex. 1001 - Page 18 of 105
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`captive security rod is anchored, to a substantially non-movable object. Dependent
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`claims ’758/3 and ’144/3 recite that “the means for securing is a cable or lanyard.”
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`I have been informed that this indicates that the claimed structure for carrying out
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`the function recited in the claims includes at least a cable or lanyard. This term
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`should therefore be construed as indicated in the table above.
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`37.
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`Term 4—Claims ’758/6 and ’144/16 recitewherein the small knob
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`that is captured and held by the locking mechanism at locking actuation.Claim
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`’758/6 depends from claim ’758/5, and claim ’144/16 depends from claim ’144/15.
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`These terms are confusing because they refer to a “small” knob, however, the
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`claims from which they depend recite aknob, but not a “small” knob. In addition,
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`these terms are confusing because the word “that” between “knob” and “is”
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`appears to be an error. However, under the broadest reasonable interpretation
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`standard, this term may be interpreted as POSA would understand that it was
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`probably intended to read: wherein the knob is captured and held by the locking
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`mechanism at locking actuation.
`
`38.
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`Term 5—Claims ’758/10 and ’144/8 recitesaid captive security rod is
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`deployed to extend and protrude from any surface of said first housing or said
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`second housing. The phrase “deployed to extend” suggests that after the captive
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`security rod is installed in the housing, the rod is movable between a retracted and
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`extended position. This feature is not shown in any of Figs. 1-65 or described in
`
`18
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`Ex. 1001 - Page 19 of 105
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`the Detailed Description of the patents, however, the specification states as
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`follows:
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`The captive security rod, upon anchoring to the at least
`one housing of the portable electronic device, is stored in
`a recess and grasped to deploy in an extended position.
`The locking end of the captive security rod operates to
`collapse into the at least one housing during non-use.
`
`’144 patent at 5:34-38. Although this language suggests that the captive security
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`rod is movable between retracted and extended positions after it has been installed,
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`the broadest reasonable construction may read on a captive security rod that is not
`
`necessarily moveable. Accordingly, I have been asked to based my opinions on the
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`following construction: the captive security rod extends out of the housing.
`
`39.
`
`Term 6—Claims ’758/11 and ’144/9 recite that [said captive security
`
`rod] operates to extend in a deployed position out of a surface of said second
`
`housing. The phrase “operates to extend” suggests that after the captive security
`
`rod is installed in the housing, the rod is movable between a retracted and extended
`
`position. This feature is not shown in any of Figs. 1-65 or described in the Detailed
`
`Description of the patents, however, the specification states as follows:
`
`The captive security rod, upon anchoring to the at least
`one housing of the portable electronic device, is stored in
`a recess and grasped to deploy in an extended position.
`The locking end of the captive security rod operates to
`collapse into the at least one housing during non-use.
`
`19
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`Ex. 1001 - Page 20 of 105
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`Ex. 1001, ’758 patent at 5:32-46; Ex. 1003, ’144 patent at 5:34-38. Although this
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`language suggests that the captive security rod is movable between retracted and
`
`extended positions after it has been installed, the broadest reasonable construction
`
`may read on a captive security rod that is not necessarily moveable. Accordingly, I
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`have been asked to base my opinions on the following construction: the captive
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`security rod extends out of the second housing.
`
`40.
`
`Term 7—Claims ’758/14 and ’144/12 recite apin lock. The term pin
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`lock should be interpreted according to its ordinary meaning to POSA: a lock with
`
`a mechanism that uses pins of varying lengths to prevent the lock from unlocking
`
`without the correct key. See Ex. 1005 Bill Phillips, PROFESSIONAL LOCKSMITHING
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`TECHNIQUES, Chapter 5 (TAB Books 1991). A pin lock (sometimes referred to as a
`
`“pin tumbler” lock) is one of the most popular type of locks in use today, for
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`applications such as door locks, deadbolt locks, padlocks, and automobile locks.
`
`Ex. 1005 at 3.
`
`41.
`
`Term 8—Claim ’758/13 recites “[t]he locking assembly as set forth in
`
`claim 2, wherein the cable or lanyard has a loop.” This claim language indicates
`
`that the claim depends from claim 2, referring to “the cable or lanyard” of that
`
`claim; however, claim 3, not claim 2 recites a “cable or lanyard.” Accordingly, the
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`reference to claim 2 appears to be an error, and my opinions are based on a
`
`20
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`Ex. 1001 - Page 21 of 105
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`construction of this claim as referring to and depending from the locking assembly
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`of claim “3.”
`
`42.
`
`Term 9—claim ’758/12 and ’144/10 recite abase plate. The term
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`base plate should be interpreted according to its ordinary meaning to POSA: a
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`security plate to which a computer or other object is attached.See Ex. 1006,
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`Makous, U.S. Patent No. 5,050,836 at 3:63-4:10; Figs. 1-2 (describing a “cable
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`security system” for locking a computer or other portable equipment to a base plate
`
`22 with a security cable).
`
`43.
`
`The remaining terms of the claims should be construed according to
`
`their ordinary meaning to POSA and do not require any further discussion.
`
`E.
`
`44.
`
`Priority Benefit
`
`I have been asked to evaluate whether the subject matter of claims 1-
`
`16 of the ’758 patent and claims 1-12 and 14-20 of the ’144 patent is described in
`
`Ex. 1007, Allen, U.S. Patent No. 8,139,356 (the “’356 patent”), which issued on
`
`March 20, 2013, based on U.S. Application Serial No. 12/657,670, filed on January
`
`25, 2010, which I understand is identified as a priority document in the ’758 and
`
`’144 patents. My opinions concerning what is described in the ’356 patent address
`
`what would be understood by POSA to be described in this patent.
`
`45.
`
`I have reviewed all of the text and figures of the ’356 patent to
`
`evaluate whether the ’356 patent includes a description of the subject matter of the
`
`21
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`Ex. 1001 - Page 22 of 105
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`claims of the ’758 and ’144 patents. I understand that the text and figures of the
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`’758 and ’144 patents includes additional information that is not included in the
`
`’356 patent. I have also reviewed the entire text and figures of the ’758 and ’144
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`patents in connection with preparing this declaration, however, I was not asked to
`
`evaluate whether the ’758 or ’144 patents contain a description of the subject
`
`matter of the claims of those patents, and my declaration does not address that
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`issue.
`
`46. As explained below, in my opinion the ’356 patent does not include a
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`descript