UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`K/S HIMPP,
`Petitioner
`
`v.
`
`III HOLDINGS 4, LLC,
`Patent Owner
`
`_______________
`
`Case No. IPR2017-00783
`Patent No. 9,191,756
`
`_______________
`
`DECLARATION OF ROBERT K. MORROW Ph.D.
`
`_______________
`
`HIMPP 1003
`
`

`

`TABLE OF CONTENTS
`
`I.(cid:1)
`
`II.(cid:1)
`
`BACKGROUND ............................................................................................. 1(cid:1)
`
`LEGAL PRINCIPLES ..................................................................................... 5(cid:1)
`
`III.(cid:1)
`
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 9(cid:1)
`
`IV.(cid:1) SUMMARY OF THE ’756 PATENT (EX1001) .......................................... 10(cid:1)
`
`A.(cid:1)
`
`B.(cid:1)
`
`C.(cid:1)
`
`Brief Description of the ’756 Patent ................................................... 10(cid:1)
`
`Summary of the Prosecution History of the ’756 Patent .................... 10(cid:1)
`
`The Purported Novelty of the ’756 Patent and the State of the
`Art ........................................................................................................ 13(cid:1)
`
`V.(cid:1)
`
`CLAIM CONSTRUCTION .......................................................................... 14(cid:1)
`
`A.(cid:1)
`
`B.(cid:1)
`
`“smart phone” (claims 1-11 and 18-20) .............................................. 14(cid:1)
`
`“communication channel” (claims 1-20) ............................................ 16(cid:1)
`
`VI.(cid:1) PRIOR ART ................................................................................................... 17(cid:1)
`
`A.(cid:1) U.S. Patent Publication No. 2003/0008659 (Waters) – EX1006 ........ 17(cid:1)
`
`B.(cid:1)
`
`U.S. Patent No. 5,721,783 (“Anderson”) – EX1007 ........................... 19(cid:1)
`
`C.(cid:1) U.S. Patent No. 8,810,392 (“Teller”) – EX1008 ................................. 19(cid:1)
`
`D.(cid:1) U.S. Patent Publication No. 2010/0273452 (“Rajann”) –
`EX1009 ................................................................................................ 22(cid:1)
`
`VII.(cid:1) GROUNDS FOR FINDING THE CHALLENGED CLAIMS
`INVALID ....................................................................................................... 22(cid:1)
`
`A.(cid:1) GROUND 1: Claims 1-5, 7, 9-10, 12-14, and 18-20 Are
`Rendered Obvious by the Combination of Waters and Anderson ...... 22(cid:1)
`
`1.(cid:1)
`
`2.(cid:1)
`
`Claim 1 is obvious over Waters and Anderson ........................ 23(cid:1)
`
`Claim 2 is obvious over Waters and Anderson ........................ 39(cid:1)
`
`i
`
`

`

`3.(cid:1)
`
`4.(cid:1)
`
`5.(cid:1)
`
`6.(cid:1)
`
`7.(cid:1)
`
`8.(cid:1)
`
`9.(cid:1)
`
`Claim 3 is obvious over Waters and Anderson ........................ 40(cid:1)
`
`Claim 4 is obvious over Waters and Anderson ........................ 43(cid:1)
`
`Claim 5 is obvious over Waters and Anderson ........................ 45(cid:1)
`
`Claim 7 is obvious over Waters and Anderson ........................ 46(cid:1)
`
`Claim 9 is obvious over Waters and Anderson ........................ 48(cid:1)
`
`Claim 10 is obvious over Waters and Anderson ...................... 49(cid:1)
`
`Claim 12 is obvious over Waters and Anderson ...................... 49(cid:1)
`
`10.(cid:1) Claim 13 is obvious over Waters and Anderson ...................... 50(cid:1)
`
`11.(cid:1) Claim 14 is obvious over Waters and Anderson ...................... 51(cid:1)
`
`12.(cid:1) Claim 18 is obvious over Waters and Anderson ...................... 52(cid:1)
`
`13.(cid:1) Claim 19 is obvious over Waters and Anderson ...................... 56(cid:1)
`
`14.(cid:1) Claim 20 is obvious over the combination of teachings of
`Waters and Anderson ................................................................ 57(cid:1)
`
`B.(cid:1)
`
`Ground 2: Claim 8 Are Rendered Obvious by the Combination
`of Waters, Anderson, and Rajann........................................................ 58(cid:1)
`
`1.(cid:1)
`
`“The smart phone of claim 7, wherein a rate of the tones
`is increased as a signal strength of the communication
`channel increases.” .................................................................... 58(cid:1)
`
`C.(cid:1) Ground 3: Claims 11 and 16-17 Are Rendered Obvious by the
`Combination of Waters, Anderson, and Teller ................................... 60(cid:1)
`
`1.(cid:1)
`
`2.(cid:1)
`
`3.(cid:1)
`
`Claim 11 is obvious over Waters, Anderson, and Teller .......... 60(cid:1)
`
`Claim 16 is obvious over Waters, Anderson, and Teller .......... 66(cid:1)
`
`Claim 17 is obvious over Waters, Anderson, and Teller .......... 68(cid:1)
`
`D.(cid:1) Ground 4: Claims 6 and 15 Are Rendered Obvious by the
`Combination of Waters, Anderson, Teller, and Rajann ...................... 69(cid:1)
`
`ii
`
`

`

`1.(cid:1)
`
`2.(cid:1)
`
`Claim 6 is obvious over Waters, Anderson, Teller, and
`Rajann ....................................................................................... 70(cid:1)
`
`Claim 15 is obvious over Waters, Anderson, Teller, and
`Rajann ....................................................................................... 72(cid:1)
`
`VIII.(cid:1) AVAILABILITY FOR CROSS-EXAMINATION ...................................... 73(cid:1)
`
`IX.(cid:1) RIGHT TO SUPPLEMENT .......................................................................... 73(cid:1)
`
`X.(cid:1)
`
`CONCLUSION .............................................................................................. 73(cid:1)
`
`
`
`iii
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`

`

`1. My name is Robert K. Morrow. I have been retained by counsel for K/S
`
`HIMPP to serve as a technical expert in this Inter Partes review proceeding. I
`
`have been asked to provide expert testimony in this declaration regarding the
`
`patentability of claims 1-20 of the 9,191,756 Patent (“the ’756 patent”).
`
`I.
`2.
`
`BACKGROUND
`
`I received a Bachelor’s Degree from the United States Air Force Academy
`
`in 1974, a Master’s Degree from Stanford University in 1982, and a PhD degree
`
`from Purdue University in 1988, all in electrical engineering. My PhD dissertation
`
`introduces an improved Gaussian approximation for calculating bit error rates in
`
`direct-sequence spread-spectrum communication systems.
`
`3.
`
`I am the president of Morrow Technical Services, a business that teaches
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`short courses in wireless engineering, manufactures and distributes collimation
`
`enhancement tools for astronomical telescopes, and provides expert services in
`
`wireless communication systems.
`
`4.
`
`During my 20-year career in the United States Air Force from 1974 to 1994,
`
`I was a Tenured Associate Professor of Electrical Engineering and the Director of
`
`Research at the United States Air Force Academy, and Deputy Head of the
`
`Department of Electrical and Computer Engineering at the Air Force Institute of
`
`1
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`

`

`Technology. I was also a member of the Air Force Chief Scientist Group and an
`
`instructor pilot.
`
`5.
`
`Following retirement from the Air Force in 1994, I started Morrow
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`Technical Services as a consultant in wireless systems. In 1999, I began
`
`developing short courses for government and industry clients in Wi-Fi®,
`
`Bluetooth®, ZigBee®, Z-Wave®, and cellular systems (including GSM, GPRS,
`
`EDGE, HSPA, cdmaOne™, cdma2000, EVDO, WiMAX, and LTE).
`
`6. My first short course, “Short Range Wireless Systems,” which included a
`
`section on Bluetooth, was presented to Teledesic in January 2000, six months after
`
`the first Bluetooth specification (1.0A) was published. I have taught three-, four-,
`
`and five-day versions of my course on Bluetooth communications to Texas
`
`Instruments, Boeing, Agilent, Philips, Lockheed Martin, Ericsson, Motorola,
`
`National Semiconductor, Broadcom, Samsung, Cisco Systems, Apple Computer,
`
`Honeywell, Microsoft, and the United States Army, among others. Clients for my
`
`other wireless courses include Samsung, Cisco Systems, Intel, Lockheed Martin,
`
`Embraer, NASA, Her Majesty’s Government Communication Center (U.K.), and
`
`the United States Navy, among others.
`
`7. My publications include the books Bluetooth Operation and Use, published
`
`by McGraw-Hill in 2002, and Wireless Network Coexistence, published by
`
`2
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`

`

`McGraw-Hill in 2004. Some of my research in communication systems was
`
`published as chapters in books by Kluwer Academic Publishers in 1997, 1998, and
`
`1999, as outlined in my curriculum vitae attached as Appendix A. I have also
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`published papers in refereed and industry journals on topics ranging from
`
`computing accurate bit and packet error rates in spread spectrum communication
`
`systems, to methods for properly documenting laboratory results in higher
`
`education, to modifying commercial radio equipment for added functionality. For
`
`example, my 1999 article “Propagation Models for Indoor Wireless Network
`
`Engineering” analyzes various models that are used to check the reliability of
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`indoor communication networks such as Bluetooth and Wi-Fi. My article
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`“Telecommunications Networks” appeared
`
`in
`
`the 1997 edition of
`
`the
`
`Encyclopædia Britannica.
`
`8.
`
`I am a senior member of the Institute of Electrical and Electronics Engineers
`
`(IEEE), and a life member of the Armed Forces Communications and Electronics
`
`Association (AFCES) and the American Radio Relay League (ARRL).
`
`9.
`
`I am
`
`the
`
`sole
`
`inventor of U.S. Patent No. 5,022,046 “A
`
`Narrowband/Wideband Packet Data Communication System,” dated June 4, 1991.
`
`This patent describes a packet radio network that combines the advantages of
`
`several different spread-spectrum signaling methods to produce an efficient
`
`3
`
`

`

`network with easier implementation and improved performance over many other
`
`systems.
`
`10.
`
`I am being compensated at my normal consulting rate of $550.00/hour for
`
`my work and for reasonable expenses incurred in preparing this declaration.
`
`11. My compensation is not dependent on and in no way affects the substance of
`
`my statements in this Declaration.
`
`12.
`
`I have no financial interest in the Petitioner or any HIMPP member. I
`
`similarly have no financial interest in the ’756 patent.
`
`13. A copy of my current curriculum vitae is attached as Appendix A.
`
`14.
`
`I have reviewed the specification and claims of the ’756 patent (EX1001)
`
`and its U.S. Patent and Trademark Office (USPTO) prosecution history (EX1002).
`
`The application for the ’756 patent was filed on December 7, 2012. I have been
`
`informed that the ’756 patent claims priority to Provisional Application No.
`
`61/583,902, filed on January 6, 2012.
`
`15.
`
`I have also reviewed the following references, all of which I understand to
`
`be prior art to the ’756 patent:
`
`EX1004 – U.S. Patent No. 8,526,649 (“Foo”). Foo was issued on
`
`September 3, 2012 and was filed on February 17, 2011.
`
`4
`
`

`

`EX1005 – U.S. Patent Publication No. 2010/0027822 (“Dietz”). Dietz
`
`was published on February 4, 2010.
`
`EX1006 – U.S. Patent Publication No. 2003/0008659 (“Waters”).
`
`Waters was published on January 9, 2003.
`
`EX1007 – U.S. Patent No. 5,721,783 (“Anderson”). Anderson was
`
`issued on February 24, 1998.
`
`EX1008 – U.S. Patent No. 8,810,392 (“Teller”). Teller was issued on
`
`August 19, 2014 from U.S. App. No. 13/019,701 that was filed on
`
`February 2, 2011.
`
`EX1009 – U.S. Patent Publication No. 2010/0273452 (“Rajann”).
`
`Rajann was published on October 28, 2010.
`
`EX1010 – U.S. Patent Publication No. 2010/0255782
`
`(“Klemmensen”). Klemmensen was published on October 7, 2010.
`
`16.
`
`I have read and agree with the facts and conclusions presented in the
`
`accompanying petition.
`
`II. LEGAL PRINCIPLES
`17.
`I am not an attorney. For the purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my opinions. My
`
`understanding of the law was provided to me by Petitioner’s attorneys.
`
`5
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`

`

`18.
`
`I understand that prior art to the ’756 patent includes patents and printed
`
`publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ’756 patent. I have applied the date of January 6, 2012, the
`
`filing date of the earliest provisional patent application to which the ’756 patent
`
`claims priority, as the priority date, although the ’756 patent may actually not be
`
`entitled to such an early priority date.
`
`19.
`
`I understand that a claim is unpatentable if it would have been obvious to a
`
`person of ordinary skill in the art at the time the alleged invention was made. I
`
`understand that a claim could have been obvious from a single prior art reference
`
`or from a combination of two or more prior art references.
`
`20.
`
`I understand that an obviousness analysis requires an understanding of the
`
`scope and content of the prior art, any differences between the alleged invention
`
`and the prior art, and the level of ordinary skill in evaluating the pertinent art.
`
`21.
`
`I further understand that certain factors may support or rebut the obviousness
`
`of a claim. I understand that such secondary considerations include, among other
`
`things, commercial success of the patented invention, skepticism of those having
`
`ordinary skill in the art at the time of invention, unexpected results of the invention,
`
`any long-felt but unsolved need in the art that was satisfied by the alleged
`
`invention, the failure of others to make the alleged invention, praise of the alleged
`
`6
`
`

`

`invention by those having ordinary skill in the art, and copying of the alleged
`
`invention by others in the field. I understand that there must be a nexus, that is, a
`
`connection, between any such secondary considerations and the alleged invention.
`
`I also understand that contemporaneous and independent invention by others is a
`
`secondary consideration tending to show obviousness.
`
`22.
`
`I further understand that a claim would have been obvious if it unites old
`
`elements with no change to their respective functions, or alters prior art by mere
`
`substitution of one element for another known in the field, and that combination
`
`yields predictable results. Also, I understand that obviousness does not require
`
`physical combination/bodily incorporation, but rather consideration of what the
`
`combined teachings would have suggested to persons of ordinary skill in the art at
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`the time of the alleged invention.
`
`23. While it may be helpful to identify a reason for this combination, I
`
`understand that there is no rigid requirement of finding an express teaching,
`
`suggestion, or motivation to combine within the references. When a product is
`
`available, design incentives and other market forces can prompt variations of it,
`
`either in the same field or a different one. If a person of ordinary skill in the art
`
`can implement a predictable variation, obviousness likely bars its patentability. For
`
`the same reason, if a technique has been used to improve one device and a person
`
`7
`
`

`

`of ordinary skill in the art would recognize that it would improve similar devices in
`
`the same way, using the technique would have been obvious. I understand that a
`
`claim would have been obvious if a person of ordinary skill in the art would have
`
`had reason to combine multiple prior art references or add missing features to
`
`reproduce the alleged invention recited in the claims.
`
`24.
`
`I am not aware of any allegations by the named inventors of the ’756 patent
`
`or any assignee of the ’756 patent that any secondary considerations tend to rebut
`
`the obviousness of any claim of the ’756 patent discussed in this declaration.
`
`25.
`
`I understand that in considering obviousness, it is important not to determine
`
`obviousness using the benefit of hindsight derived from the patent being
`
`considered.
`
`26.
`
`I understand that other challenges to the validity of a patent, including patent
`
`ineligibility, enablement, written description, and definiteness, cannot be raised in
`
`IPR proceedings before the Board to challenge the validity of the ’756 patent.
`
`Accordingly, I did not consider those other challenges.
`
`27. The analysis in this declaration is in accordance with the above-stated legal
`
`principles.
`
`8
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`

`

`III. PERSON OF ORDINARY SKILL IN THE ART
`28.
`I understand that the level of ordinary skill may be reflected by the prior art
`
`of record, and that a person of ordinary skill in the art to which the claimed subject
`
`matter pertains would have the capability of understanding the scientific and
`
`engineering principles applicable to the pertinent art. I understand that one of
`
`ordinary skill in the art has ordinary creativity, and is not a robot.
`
`29.
`
`I understand there are multiple factors relevant to determining the level of
`
`ordinary skill in the art, including (1) the levels of education and experience of
`
`persons working in the field at the time of the invention, (2) the sophistication of
`
`the technology, (3) the types of problems encountered in the field; and (4) the prior
`
`art solutions to those problems. There are likely a wide range of educational
`
`backgrounds in the technology fields pertinent to the ’756 patent.
`
`30. A person of ordinary skill in the art (“POSA”) of the ’756 patent would have
`
`had, as of January 2012, at least a bachelor’s degree in electrical engineering,
`
`computer science, or an equivalent science/engineering degree and at least two
`
`years of experience in wireless technologies and systems, including experience
`
`with short-range wireless protocols, or would have at least four years of experience
`
`in electronic system design. As described in more detail above, I would have been
`
`a person with at least ordinary skill in the art of the ’756 patent as of the time of its
`
`alleged invention.
`
`9
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`

`

`IV. SUMMARY OF THE ’756 PATENT (EX1001)
`A. Brief Description of the ’756 Patent
`31. The ’756 patent is directed to a portable hand-held electronic device, such as
`
`a smart phone, capable of communicating with a hearing aid through a wireless
`
`communication channel. ’756 patent (EX1001) at 1:66-2:5. The smart phone
`
`executes an application that periodically records its current location (e.g., as global
`
`positioning system (GPS) coordinates), along with a
`
`time stamp, while
`
`communicating with the hearing aid. Id. at 1:65-2:14. The time and location data
`
`are stored in the memory of the smart phone. Id. at 2:11-13. The application
`
`allows the user to access this time and location data as a means of tracking the
`
`hearing aid. Id. at 2:24-29. Furthermore, if the hearing aid is misplaced or lost,
`
`causing the communication link between the smart phone and hearing aid to be
`
`interrupted, the user can access the last time and location data set to narrow the
`
`search area for the lost hearing aid. Id. at 1:65-2:48.
`
`B.
`Summary of the Prosecution History of the ’756 Patent
`32. The ’756 patent application, U.S. App. No. 13/708,140 (“the ’140
`
`application”) was filed on December 7, 2012 and claims priority to U.S. App. No.
`
`61/583,902, filed on January 6, 2012. The ’140 application was initially filed with
`
`20 claims, including three independent claims. The application issued as the ’756
`
`patent with 20 claims, including independent claims 1, 12, and 18. Portions of the
`
`10
`
`

`

`file history pertinent to the issues in this Petition and Declaration are summarized
`
`below.
`
`33. There are three references listed on the ’756 patent cover: U.S. Patent
`
`Publication Nos. 2010/0027822 (Dietz, EX1005) and 2015/0010178 (Neumeyer),
`
`and U.S. Patent No. 8,526,649 (Foo, EX1004).
`
`34.
`
`In a first Non-Final Office Action dated October 6, 2014, all the pending
`
`claims 1-20 were rejected under 35 U.S.C. §101 as being directed to non-statutory
`
`subject matter. ’756 FH (EX1002) at 44-48.
`
`35. Applicants filed a Response on January 6, 2015 that included amendments to
`
`independent claims 1, 12, and 18 to include the word “non-transitory.” Id. at 54-61.
`
`36.
`
`In the Final Rejection mailed on April 6, 2015, all the pending claims 1-20
`
`were rejected under 35 U.S.C. §102(e) as being anticipated by Foo. Id. at 73-82.
`
`Foo relates to using a smart phone to enhance audio signals used by a hearing aid.
`
`Foo (EX1004) at Abstract, 2:25-29. Foo does not directly relate to using a smart
`
`phone to locate a hearing aid. Rather, Foo relates to providing various notification
`
`signals to a hearing aid using a processing device, such as a smart phone. Foo
`
`(EX1004) at 2:54-67, 2:25-29. The Examiner did not cite any art other than Foo
`
`during prosecution. See ’756 FH (EX1002).
`
`11
`
`

`

`37. Applicants filed a Response on July 6, 2015, canceling claim 8 and adding
`
`new claim 21. Applicants alleged that Foo does not disclose:
`
`(cid:120) “periodically store data related to the location of the smart phone as the
`
`last known location of the hearing aid while the communication channel
`
`is open” as recited in claims 1-11 and 21 (issued as claim 8)
`
`(cid:120) “periodically store the location as a last known location of the hearing
`
`aid, while the communication channel remains open” as recited in claims
`
`12–17.
`
`(cid:120) “storing time data and location data in a non-transitory computer readable
`
`storage medium of the smart phone in response to establishing the
`
`communication channel” as recited in claims 18-20.
`
`’756 FH (EX1002) at 90-103.
`
`38. On July 17, 2015, the Examiner issued a Notice of Allowance, noting that
`
`Foo does not teach the three elements identified above. Id. at 109-115. In
`
`particular, the Examiner stated: “Regarding Claim 1, Foo does not teach
`
`periodically storing data related to the location of the smart phone as the last
`
`known location of the hearing aid while the communication channel with the
`
`hearing aid is open.” Id. at 114. In addition, the Examiner stated, “Claim 12 is
`
`allowable for similar reasons as clam 1.” Id. Finally, the Examiner stated,
`
`12
`
`

`

`“Regarding Claim 18, Foo does not teach storing time data and location data in a
`
`non-transitory computer readable storage medium of the smart phone in response
`
`to establishing the communication channel with the hearing aid.” Id. at 115.
`
`C. The Purported Novelty of the ’756 Patent and the State of the Art
`39. According to the ’756 patent, “hearing aids are expensive, small, and easy to
`
`lose … losing a hearing aid is a common occurrence.” ’756 patent (EX1001) at
`
`1:33-40. The purported novelty of the ’756 patent appears to be the use of a hand
`
`held electronic device “configured to communicate with the hearing aid” through a
`
`wireless communication channel (such as BLUETOOTH®), while executing a
`
`locator application to monitor/store the electronic device location to help a user
`
`find a lost or misplaced hearing aid. Id. at 1:66-2:13, 2:61-62.
`
`40. However, the concept of monitoring/storing the location of items with hand
`
`held electronic devices using wireless communications such as BLUETOOTH®
`
`was not novel at the time of application for the ’756 patent.
`
`41. For example, Waters and Teller both disclose using a mobile
`
`telecommunications device to monitor/store the location of a variety of items using
`
`wireless communication protocols, such as BLUETOOTH®,
`
`to aid with
`
`monitoring/locating those items, for example when those items are misplaced.
`
`Waters (EX1006) at Abstract, ¶0010; Teller (EX1008) at Abstract, 5:59-6:11.
`
`13
`
`

`

`Moreover, BLUETOOTH® was in use with hearing aids prior to the ’756 patent’s
`
`alleged priority date, as evidenced, for example, by Teller (EX1008 at 5:59-64,
`
`13:43-46, disclosing the use of the hearing aid as a monitoring device using
`
`BLUETOOTH® and other methods of wireless communication) and Klemmensen
`
`(EX1010 at ¶0005, disclosing pairing hearing aid accessories based on “Bluetooth
`
`technology”).
`
`V. CLAIM CONSTRUCTION
`42.
`I understand that in an IPR, the terms in the challenged claims should be
`
`given their plain meaning under the broadest reasonable interpretation standard. I
`
`also understand that if the specification sets forth an alternate definition of a term
`
`with reasonable clarity, deliberateness, and precision, the patentee’s lexicography
`
`governs. I have applied this standard for this proceeding. I have applied the
`
`broadest reasonable meaning in light of the specification as commonly understood
`
`by those of ordinary skill in the art for any claim term not included in this section.
`
`A.
`“smart phone” (claims 1-11 and 18-20)
`43. Various claims of the ’756 patent refer to a “smart phone”, for example,
`
`independent claims 1 and 18. This term should be construed as a mobile device
`
`that integrates computing capabilities, including a memory that stores applications
`
`and a processor that runs a variety of software applications, and cellular telephone
`
`capabilities. This construction is consistent with how the term was understood in
`
`14
`
`

`

`2012. American Heritage Dictionary (EX1011) 1652 (5th ed. 2011) (defining
`
`“smart phone” as “A cell phone that includes features of a PDA, such as
`
`applications for reading and sending e-mail, maintaining a calendar, and browsing
`
`the web.”); Barron’s Dictionary of Computer and Internet Terms (EX1012) 457
`
`(11th ed. 2013), (defining “smart phone” as “a cellular telephone that includes the
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`functions of a PDA (a general-purpose pocket-sized computer), such as web
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`browsing, Wi-Fi wireless access, a camera, and a music player.”). In addition, the
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`following articles discuss smart phone development and functionality by 2012: I.
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`Sager, Before IPhone and Android Came Simon, the First Smartphone (June 29,
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`2012) (EX1013) at 2 (“Simon was the first smartphone. Twenty years ago, it
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`envisioned our app-heavy mobile lives, squeezing the features of a cell phone,
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`pager, fax machine, and computer into an 18-ounce black brick.”); T. Martin, The
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`evolution of the smartphone (July 29, 2014) (EX1014) at 13 (“The term
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`‘smartphone’ would not be coined until [1997], when Ericsson released …
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`Penelope. … Through the turn of the century, other manufacturers began mashing
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`up PDA functionality with cell phones.”); B. Kasoff, A Closer Look: The Evolution
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`of the Smart Phone (September 19, 2014) (EX1016) (describing various
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`smartphone released between 1994-2012, including 1999 Qualcomm pdQ
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`Smartphone that “Integrated Palm PDA and internet connectivity” and 2000
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`Ericsson R380 that “Combined mobile phone and PDA functions, limited web
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`browsing and resistive touchscreen”)
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`44. The ’756 specification discloses, “Embodiments of a system are described
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`below that include a portable or hand held electronic device (such as a cell phone,
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`smart phone, personal digital assistant (PDA), tablet computer, or other portable
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`computing system) that is configured to communicate with the hearing aid.” ’756
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`patent (EX1001) at 1:66-2:3. The ’756 patent specification does not include a
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`definition for the term “smart phone.”
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`45. The construction I proposed above is consistent with the specification of
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`the ’756 patent, the plain and ordinary meaning of the term “smart phone”, and
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`captures the factors that are necessary to determine whether a device could be
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`considered a smart phone in 2012: the integration of computing capabilities,
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`including a memory that stores applications and a processor that runs a variety of
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`software applications, and cellular telephone capabilities in the same device.
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`B.
`“communication channel” (claims 1-20)
`46. All the claims 1-20 of the ’756 patent recite this term. “Communication
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`channel” should be construed as communication links or connections between or
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`among devices using a wireless communication protocol, including (but not limited
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`to) BLUETOOTH®.
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`47. The ’756 patent describes a BLUETOOTH® communication channel as
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`within the scope of the claimed “communication channel.” ’756 patent (EX1001)
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`at 2:14-15 (“[t]he electronic device communicates with the hearing aid via a short
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`range wireless protocol (such as Bluetooth®)”; 2:58-62: “Electronic device 120
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`includes a transceiver 148 … Transceiver 148 is a radio frequency transceiver
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`configured to communicate with hearing aid 102 through a short range wireless
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`communication channel, such as a Bluetooth®.”). However, neither the ’756
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`specification or claims limit the communication channel to any particular protocol.
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`48. Accordingly, the construction I proposed above is consistent with the
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`specification of the ’756 patent and with the ordinary use of the term.
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`VI. PRIOR ART
`A. U.S. Patent Publication No. 2003/0008659 (Waters) – EX1006
`49. Waters relates
`to a mobile communications device (e.g., a PDA
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`incorporating a mobile telephone) having a long range cellular transceiver and a
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`short range telecommunications transceiver that can communicate, for example,
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`via BLUETOOTH®, with a variety of other personal devices. Waters (EX1006) at
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`¶¶0010, 0075, 0077. The mobile communications device of Waters monitors the
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`presence of the members with which it is in communication (e.g., other members
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`of the piconet) and keeps an activity log of the presence of the items with which it
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`is in communication and its own location. Id. at ¶¶0082-0083. The “activity log
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`may be time-stamped and location stamped.”
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` Id. at ¶0022.
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` In some
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`implementations, “a piconet device stores its activity log remote from itself ….
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`More than one piconet device may contribute information to a common database,
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`or activity log, relating to which devices were close enough, at which time to be in
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`the same piconet. There may be a common log or storage place for several
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`devices.” Id. at ¶0011.
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`50. Waters discloses that the location of the mobile communication device may
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`be stored as the last known location of another device with which it is in
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`communication. Id. at ¶0024 (“If direct piconet connection is made between a first
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`device which has no inherent self-location abilities and another, second, device
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`which does know its own location [e.g., a PDA/mobile phone], then the first device
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`may assume itself to be at the same, known, location as the second device.”).
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`With Waters’ device, “creation of the activity logs of the piconet devices
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`preferably occurs automatically … when the devices form a piconet.” 1 Id. at
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`¶0025.
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`51. The activity log of Waters may be used to locate a misplaced item. Id. at
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`¶0035 (“a piconet telecommunications device … in which the controller is capable
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`of receiving a request to search for a missing item of known identity and upon
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`1 All emphasis herein added unless otherwise indicated.
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`such request is adapted to screen the activity log to identify historic piconets
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`known to the device to have contained the missing item and the positional location
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`of the historic piconet which last contained the missing item, the device being
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`adapted to communicate the last, piconet-known to the device, location of the
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`missing item to the user.”); id. at ¶0095 (“When person 10 realises [sic] that they
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`do not have their glasses, at say 10.45 pm, they enter a ‘find glasses G1’
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`command into their device 10. This then tries to find the glasses.”).
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`B. U.S. Patent No. 5,721,783 (“Anderson”) – EX1007
`52. Anderson relates to a hearing aid which communicates wirelessly with a
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`remote processor unit, or RPU. Anderson (EX1007) at Abstract. The system of
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`Anderson can be used to assist users in the “location of misplaced hearing aid
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`system components.” Id. at 1:16-17, 3:1-2. Anderson discloses searching for a
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`misplaced hearing aid using an RPU: “if an earpiece is misplaced, the user
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`manually activates (using, for example, the keyboard 946) a search mode program
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`(i.e., a … program that indicates on the display 954 that communication has been
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`established with an earpiece) in the RPU and observes the RPU display 954 while
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`moving around searching for the earpiece.” Id. at 22:3-8.
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`C. U.S. Patent No. 8,810,392 (“Teller”) – EX1008
`53. Teller relates to using wireless monitoring devices (e.g., a variety of mobile
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`(handheld or portable) devices) to monitor the presence of a variety of items using
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`wireless communication channels or sensing technology, such as BLUETOOTH®.
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`Teller (EX1008) at Abstract, 5:57-6:11. The monitoring device of Teller “should
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`be understood to be any device or item capable of sensing or detecting the
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`presence of another device or item.” Id. 6:4-6. The monitoring device of Teller
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`can be embodied using a variety of mobile (handheld or portable) devices,
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`including: mobile telecommunications de