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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`PINN, INC.,
`Patent Owner.
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`Case IPR2021-00220
`Patent No. 10,455,066
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`DECLARATION OF DR. SCOTT M. NETTLES
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`PINN-2014 1
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`TABLE OF CONTENTS
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`I. BACKGROUND AND EXPERT QUALIFICATIONS ................................... 1
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`II. STATEMENT OF OPINION ............................................................................ 4
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`III. TECHNOLOGY BACKGROUND ...............................................................15
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`A. Wireless Communications and Bluetooth ...........................................15
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`B. Bluetooth .................................................................................................16
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`C. Distributed Intelligence .........................................................................17
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`IV. OVERVIEW OF THE ’066 PATENT ...........................................................17
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`V. CLAIMS 1 & 9 OF THE ’066 PATENT ARE ENTITLED TO THE
`PRIORITY DATE OF APRIL 3, 2015 ........................................................19
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`A. Wireless Pairing Between the Wireless Earbud and Smartphone is
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`Supported by the ’978 Provisional ...............................................................20
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`B.
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`Initiating Pairing Between the Smartphone and the Wireless
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`Earbud by Pressing a User Input Button is Supported by the ’978
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`Provisional ......................................................................................................31
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`VI. CONCLUSION ................................................................................................33
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`1.
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`I, Scott Nettles of San Francisco, California, declare that:
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`I. BACKGROUND AND EXPERT QUALIFICATIONS
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`2.
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`I have attached a current copy of my curriculum vitae as Exhibit A. A list of
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`the cases during at least the last five years in which I have signed a Protective Order, have
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`testified as an expert either at a trial, hearing, or deposition, or have submitted
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`statements/opinions is included as Exhibit A.
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`3.
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`I attended Michigan State University from 1977 to 1981 as a Merit Scholar
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`and an Alumni Distinguished Scholar, and received a bachelor’s degree in Chemistry. I
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`later attended Carnegie Mellon University from 1988 to 1995, during which time I received
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`both a master’s degree (1992) and a Ph.D. (1996) in Computer Science. Most of my
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`graduate work was focused on developing on developing programming languages for
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`distributed systems. My dissertation was entitled “Safe and Efficient Persistent Heaps” and
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`focused on high performance automatic storage management for advanced distributed
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`database systems.
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`4.
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`Before earning my Ph.D., I worked for over four years in industry at Silicon
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`Solutions, Inc. and Digital Equipment Corporation, developing computer aided design
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`(CAD) software for the semiconductor and computer sectors. For example, I designed and
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`implemented systems for VLSI mask generation and VLSI design rule checking. I also
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`built the first graphical drawing editor for the X window system, Artemis, which included
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`a sophisticated graphical user interface.
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`5.
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`I have worked as a professor at three universities since 1995; the University
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`of Pennsylvania, the University of Arizona, and The University of Texas at Austin. I was
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`the recipient of a National Science Foundation CAREER award for “CAREER: Advancing
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`Experimental Computer Science in Storage Management and Education” while I was an
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`Assistant Professor at the University of Pennsylvania. During this time, I also was part of
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`the DARPA funded SwitchWare project, which was one of the pioneering groups in the
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`area of Active Networking (“AN”). My group developed PLAN, the first domain-specific
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`programming language for programmable packets, as well as PLANet, the first purely
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`active inter-network.
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`6.
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`I joined the faculty of The University of Texas at Austin (“UT”), in the
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`Department of Electrical and Computer Engineering in 1999. In 2005, I was appointed
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`Associate Professor with tenure. At UT, my graduate teaching has focused on networking,
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`including numerous advanced seminars on mobile and wireless networking. My
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`undergraduate teaching has included networking, operating systems, and one of UT’s
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`required programming class, which focuses on programming with abstractions, Java, and
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`data structures.
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`7. At UT, I continued to develop AN technology and in 2002, my Ph.D. student,
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`Mike Hicks, won the ACM SIGPLAN dissertation award for our joint work on software
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`updating. Along with my Ph.D. student, Seong-kyu Song, I focused my AN work on mobile
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`and wireless networking. As a result, my research shifted away from AN to mobile and
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`wireless networking in general, especially interactions between the network, the radios,
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`and the physical world. Most of my current research involves the development of Hydra,
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`which is a working prototype of an advanced software-implemented WiFi network funded
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`primarily by NSF.
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`8.
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`I retired from UT Austin in the Spring of 2013. I am currently self-employed.
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`Much of my current work involves consultations with attorneys regarding questions of
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`patent infringement and validity.
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`9.
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`I have reviewed U.S. Pat. No. 10,455,066 (the “’066 Patent”) and relevant
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`excerpts of the prosecution history of the ’066 Patent (“the Prosecution History” or
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`APPLE-1002). I also reviewed the following references and materials, in addition to other
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`materials I cite in my declaration:
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`• U.S. Patent No. 8.401,219 to Hankey et al. (“Hankey” or “APPLE-1004”)
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`• U.S. Patent No. 8,086,281 to Rabu et al. (“Rabu” or “APPLE-1005”)
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`• U.S. Patent No. 8,078,787 to Lydon et al. (“Lydon” or “APPLE-1007”)
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`• U.S. Patent No. 8,564,544 to Jobs et al. (“Jobs” or “APPLE-1022”)
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`• U.S. Provisional Patent Application No. 62/142,978 (“the ’978 Provisional” or
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`“APPLE-1049”)
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`• U.S. Patent Publication No. 2016/0357510 to Watson et al. (“Watson-510” or
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`“APPLE-1051”)
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`• U.S. Provisional Application No. 62/171,338 (“APPLE 1052”)
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`• U.S. Patent Publication No. 2016/0360350 to Watson et al. (“Watson-
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`350” or “APPLE-1053”)
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`• U.S. Provisional Application No. 62/171,376 (“APPLE-1054”)
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`• Declaration of Dr. Jeremy Cooperstock (“Cooperstock Declaration” or
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`“APPLE-1050”)
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`• Apple’s Petition for Inter Partes Review of United States Patent No.
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`10,455,066 Pursuant to 35 U.S.C. §§ 311-319, 37 C.F.R. § 42 (“Petition”)
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`• Expert reports, pleadings, and Court orders in the district court litigation that
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`are related to these issues presented in Apple’s petition including the Wells
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`Report, Apple’s invalidity contentions, and related documents. I have been
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`deposed in the district court litigation and am prepared to testify at trial.
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`II. STATEMENT OF OPINION
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`10.
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`I have been asked to analyze and provide my opinions on the priority date of
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`the’066 Patent (APPLE-1001). In my opinion, the claims of the ’066 Patent are entitled to
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`priority date of April 3, 2015, which is the filing date of the ’978 Provisional. In my
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`opinion, Dr. Cooperstock has failed to show that the claims of the ’066 Patent are not
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`entitled to this priority date.
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`11.
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`I have also been asked to analyze and provide my opinions regarding the
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`validity of ’066 Patent in light of my analysis and opinions with respect to the priority date
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`of the ’066 Patent. In my opinion, the ’066 Patent is valid and the Cooperstock Declaration
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`does not show otherwise.
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`12.
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`I am not a legal expert and offer no opinions on the law. However, I have been
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`informed by counsel of the legal standards that apply with respect to patent validity and
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`invalidity, and I have applied them in arriving at my conclusions.
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`13.
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`I understand that a proper invalidity analysis begins with determination or
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`construction of the meaning of terms in the claims challenged in the Petition. I understand
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`that the claims are to be construed based upon their ordinary meaning as understood by one
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`of ordinary skill in the art and in some instances an inventor may provide a special meaning
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`for a term or describe his or her invention in a way that departs from the ordinary meaning
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`of the words used to claim the invention. In forming my opinions, I have applied the Special
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`Master’s constructions (as found at PINN-2006) to those terms where appropriate. As to
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`the other terms and phrases used in the claims, I have applied the ordinary and accustomed
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`meaning for those terms as would have been understood by one of ordinary skill in the art
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`when viewed in light of the patents-in-suit.
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`14.
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`I understand the Board may issue an opinion construing some of the terms for
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`which the parties presented differing constructions. To the extent the Board’s order
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`warrants further explanation, consideration, or analysis of the issues, I may want to
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`supplement this declaration after having time to consider the new information.
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`15. When interpreting a patent, I understand that it is important to view the
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`disclosure and claims of that patent from the level of ordinary skill in the relevant art at the
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`time of the invention.
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`16.
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`I understand that claims are construed from the perspective of one of ordinary
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`skill in the art to which the patented subject matter pertains at the time of the invention.
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`Furthermore, I understand that a determination of the level of ordinary skill in the art
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`includes as relevant factors (1) the educational level of the inventor; (2) the type of
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`problems encountered in the art; (3) the prior solutions to those problems; (4) the rapidity
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`with which innovations are made in the art; (5) the sophistication of the technology in the
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`art; and (6) the educational level of active workers in the field.
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`17. My opinion of the level of ordinary skill in the art with regard to the ’066
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`Patent is instructed by my prior experience working and teaching in the fields of wireless
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`communications and distributed intelligence, my knowledge of colleagues and others
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`working in that general field as of and for many years prior to the 2015 time frame, and the
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`above references.
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`18. Taking the above factors into account, in my opinion, a person of ordinary
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`skill in the art would be represented by a person with an electrical engineering degree and
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`two or more years of professional experience working with consumer products and wireless
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`communications, or equivalent experience and training. I exceeded that level of skill in the
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`relevant time frame. With respect to an equivalent level of experience and training, it is my
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`opinion that a person with at least a bachelor’s degree in industrial design and at least two
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`to five years of professional experience working with consumer mobile wireless products
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`and designing wireless systems would have equivalent experience and training. In addition
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`to being (at least) a POSITA at the time of the invention, as an engineering professor, I
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`taught hundreds of students from 1995-2013 who would meet these qualifications.
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`19.
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`I understand that the claims delineate the bounds of a patentee’s invention and
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`that claim construction starts with the language of the claims. I further understand that
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`claims are interpreted from the standpoint of a person of ordinary skill in the art in light of
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`the patent specification, its prosecution history, and any relevant extrinsic evidence.
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`20.
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`I understand that the question of invalidity of a patent claim is determined
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`from the perspective of a person of ordinary skill in the art in the field of the claimed
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`invention as of the time of the invention. Thus, prior art must be evaluated from the
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`perspective of one of ordinary skill in the field of the invention as of the time of the
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`invention.
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`21.
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`It is my understanding that there are several ways in which a patent may be
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`invalid, and that in petitioning to institute an Inter Partes review, the petitioner has the
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`burden to establish a reasonable likelihood that it will prevail at invalidating at least one
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`claim challenged in the petition.
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`22.
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`I understand that “prior art” may include items that were publicly known or
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`that have been used or offered for sale, publications, or patents that disclose the claimed
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`invention or elements of the claimed invention. To be prior art, the item or reference must
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`have been made, known, used, published, or patented either before the invention was made
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`or more than one year before the filing date of the patent application.
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`23.
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`I understand that prior art includes any of the following.
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`• any product or method that was publicly known or used by others in the
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`United States before the claimed invention was invented;
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`• any product or method that was in public use or on sale in the United States
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`before the priority date of the ’066 Patent;
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`• any patents that issued before priority date of the ‘066 Patent;
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`• any publications having dates of public accessibility before priority date of
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`the ‘066 Patent; and
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`• any product or method that was made by anyone in the United States before
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`the date of invention where the claimed invention was not later abandoned,
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`suppressed, or concealed.
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`24. As discussed below, the claims of the ‘066 Patent are entitled to the priority
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`date of April 3, 2015.
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`25.
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`I further understand that a patent claim can be proved invalid if it is anticipated
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`(under 35 U.S.C. § 102) or rendered obvious (under 35 U.S.C. § 103) by one or more prior
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`art references. I also understand that a patent claim can be proved invalid if it does not meet
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`one of the formal requirements including providing a sufficient written description of the
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`invention or providing an enabling disclosure of the invention (under 35 U.S.C. § 112).
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`26.
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`I understand that the patent laws have certain requirements for the content of
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`patents. One of the mandatory parts of a patent is called a specification. I have been
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`informed that the specification includes the written description, the figures, and the claims
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`of the patent.
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`27.
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`I understand that a patent may be invalid if the written description of the
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`invention does not describe the invention in sufficient detail that one skilled in the art can
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`reasonably conclude that the inventor had possession of the claimed invention. In other
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`words, the full scope of each claim must be described in the written description in such a
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`way to show that the applicants for the patent actually had possession of the full scope of
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`the thing they claim as their invention at the time the patent application was filed.
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`28.
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`I have been informed that the written description requirement must be
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`considered from the viewpoint of a person having ordinary skill in the field of technology
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`of the patent when the application was filed. I further understand that the written
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`description requirement is not satisfied unless a person having ordinary skill in art reading
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`the original patent application would have recognized that it describes the full scope of the
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`claimed invention as it is finally claimed in the issued patent and the inventor actually
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`possessed that full scope by the filing date of the original application. This requirement
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`may be satisfied by any combination of words, structures, figures, diagrams, formulas, or
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`other descriptions contained in the patent application on the date it was filed. I also
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`understand that the level of detail required to satisfy the written description requirement
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`varies depending on the nature and scope of the claims and on the complexity and
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`predictability of the relevant technology.
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`29.
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`I understand determining whether the written description requirement is
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`satisfied requires an objective inquiry into the four corners of the specification from the
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`perspective of a person of ordinary skill in the art. I further understand that given this
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`perspective, in some instances, a patentee can rely on information that is well-known in the
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`art to satisfy the written description requirement, i.e. that on the date the original patent
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`application was filed, a person of ordinary skill in the art must appreciate that, at the time
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`of filing, the full scope or missing requirement is necessarily present, i.e., implicit, in the
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`written description of the patent application on the filing date. I also understand that
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`drawings in a patent can constitute an adequate description if they describe what is claimed
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`and convey to one of skill in the art that the patentee actually invented what is claimed.
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`Thus, I understand that the patent applicants need not use the exact wording used in the
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`claims to describe the invention. Nevertheless, I also understand that the written description
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`is not satisfied if the subject matter actually described in the specification would render the
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`claimed subject matter obvious.
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`30.
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`I understand that a patent must disclose sufficient information to enable or
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`teach persons of ordinary skill in the field of the invention as of the effective filing date of
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`the claimed invention to make and use the full scope of the claimed invention without
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`undue experimentation. This requirement is known as the enablement requirement. If a
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`patent claim is not enabled, it is invalid.
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`31.
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`I understand that in considering whether a patent complies with the
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`enablement requirement, you must keep in mind that patents are written for persons of
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`ordinary skill in the field of the invention. Thus, a patent need not expressly state
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`information that persons of ordinary skill would be likely to know or could obtain.
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`32.
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`I understand that the USPTO evaluates whether a patent has met the
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`requirements of patentability, including enablement, before the USPTO allows the patent
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`to issue, so there is a presumption that the enablement requirement is met here.
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`33.
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`I understand that enablement based on the patent specification is judged as of
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`the filing date of the first-filed patent application. I further understand that enablement is
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`to be determined from the viewpoint of a person of ordinary skill in the art who has read
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`the specification.
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`34.
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`I understand that for a later-filed application to be entitled to the benefit of the
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`filing date of an earlier-filed application, the later-filed application must be an application
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`for a patent for an invention which is also disclosed in the prior application. The disclosure
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`of the invention in the prior application must provide adequate support and enablement for
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`the claimed subject matter of the later-filed application (or issued patent) in compliance
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`with the requirements of 35 U.S.C. § 112(a).
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`35. The fact that some experimentation may be required for a person of ordinary
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`skill in the field of the invention to practice the claimed invention does not mean that a
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`patent does not meet the enablement requirement. Factors that you may consider in
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`determining whether persons of ordinary skill in the field of the invention would require
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`undue experimentation to make and use the full scope of the claimed invention include: the
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`quantity of experimentation necessary and whether that experimentation involves only
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`known or commonly used techniques; the amount of direction or guidance disclosed in the
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`patent; the presence or absence of working examples in the patent; the nature of the
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`invention; the state of the prior art; the relative skill of those in the art; the predictability of
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`the art; and the breadth of the claims.
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`36.
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`I understand that a patent claim is anticipated if each element of the claim is
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`disclosed in a single prior art reference and that reference enables a person having ordinary
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`skill in the art to make and use the claimed invention.
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`37.
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`I understand that to anticipate a claim, each element in the claim must be
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`present in a single item of prior art and arranged or combined in the same way as recited
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`in the claim. Two or more items of prior art cannot be combined to find anticipation. In
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`determining whether every one of the elements of the claimed invention is found in the
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`prior art, you should consider what a person of ordinary skill in the art would have
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`understood from his or her review of the particular prior art.
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`38.
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`I understand that in determining whether a single item of prior art anticipates
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`a patent claim, you should take into consideration not only what is expressly disclosed in
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`the particular prior art reference but also what is inherently present or disclosed in that prior
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`art or inherently results from its practice. Prior art inherently anticipates a patent claim if
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`the missing element or feature would necessarily result from what the single item of prior
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`art teaches to persons of ordinary skill in the art. A party claiming inherent anticipation
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`must prove that the allegedly inherent element or feature necessarily is present by clear and
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`convincing evidence. I understand that evidence outside of the prior art reference itself may
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`be used to show that elements that are not expressly disclosed in the reference are inherent
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`in it. To be inherent, the feature that is alleged to have been inherent must necessarily have
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`existed in the prior art reference. The fact that the feature is likely to have existed is not
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`sufficient. It is not required, however, that persons of ordinary skill recognize or appreciate
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`the inherent disclosure at the time the prior art was first known or used. Thus, the prior use
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`of the patented invention that was unrecognized and unappreciated can still be an
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`invalidating anticipation, provided the allegedly inherent feature was necessarily present
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`in the reference.
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`39.
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`I understand that where a patent claim is not anticipated by a single prior art
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`reference, the claim is still invalid if, by a combination of references, a person having
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`ordinary skill in the art would be motivated or have some rationale to modify the device
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`disclosed in one reference according to a second reference.
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`40.
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`I understand that a claimed invention is invalid as “obvious” if it would have
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`been obvious to a person of ordinary skill in the art of the claimed invention as of the
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`priority date. Unlike anticipation, which allows consideration of only one item of prior art,
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`obviousness may be shown by considering one or more than one item of prior art.
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`41.
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`I understand that in deciding obviousness, you must avoid using hindsight;
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`that is, you should not consider what is known today or what was learned from the
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`teachings of the patent. You should not use the patent as a road map for selecting and
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`combining items of prior art. You must put yourself in the place of a person of ordinary
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`skill in the art as of the priority date.
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`42.
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`I further understand that additional factors may be considered in determining
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`whether a patent claim is obvious, such as (a) the scope and content of the prior art; (b) the
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`differences between the claim invention and the prior art; (c) the level of ordinary skill in
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`the art; and (d) any relevant secondary considerations, including (1) the invention’s
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`commercial success, (2) any long felt but unresolved needs, (3) the failure of others, (4)
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`scepticism by experts, (5) praise by others, (6) teaching away by others, (7) recognition of
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`a problem, (8) copying of the invention by competitors, and (9) other relevant factors
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`including the technical advantages or characteristics over the prior art. When considering
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`whether a combination of prior art references would render an invention obvious, I
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`understand that I should also consider the following additional factors, none of which is
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`conclusive: (a) whether there is any motivation, suggestion, or teaching in the prior art to
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`combine those references; (b) whether such a teaching, suggestion, or motivation was
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`generally within the knowledge of one of ordinary skill in the art; (c) whether such a
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`combination would have yielded predictable results to one of ordinary skill in the art; (d)
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`the nature of the problem to be solved by the ‘066 Patent and the prior art; and (e) whether
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`it would have been obvious to try the combination.
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`43.
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`I understand that a patentee must ‘distinctly’ claim, which means that the
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`claim must have a meaning discernible to one of ordinary skill in the art when construed
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`according to correct principles. I further understand that if there is no discernible meaning
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`after all reasonable attempts at construction by a person of ordinary skill in the art, a court
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`must declare the claim indefinite as insolubly ambiguous.
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`III. TECHNOLOGY BACKGROUND
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`A. Wireless Communications and Bluetooth
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`44. Generally, information is transmitted in a communication system from a
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`transmitter to a receiver that are placed a limited distance apart. Over the past several
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`decades, wireless communication has been among the fastest growing and most vibrant
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`technological areas in the communication field. Simply put, wireless communication is a
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`method of transmitting information from one point to other, without using any hard-wired
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`connection like cables or any other conductive physical medium. As examples, wireless
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`systems can use radio waves or optical signalling. By using wireless communication, a
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`transmitter and a compatible receiver can be separated by anything from a few meters (e.g.,
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`a T.V. Remote Control) to few thousand kilometres (e.g., satellite communication). Some
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`of the commonly used wireless communication systems include cellular mobile phones,
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`GPS receivers for providing location and speed information, remote controls for
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`appliances, Bluetooth audio communication systems, and Wi-Fi for data transmission.
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`B. Bluetooth
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`45. Bluetooth is a wireless technology standard used for exchanging data between
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`fixed and mobile devices over short distances. Bluetooth communication is performed by
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`using short-wavelength UHF radio waves in the industrial, scientific, and medical radio
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`bands which are located from 2.402 GHz to 2.480 GHz in the radio spectrum. Bluetooth
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`communication was originally conceived as a wireless alternative to the historic RS-232
`
`serial data communication standard which used point-to-point data cables.
`
`46. The Bluetooth standard is currently managed by the Bluetooth Special Interest
`
`Group (“SIG”) which has more than 35,000 member companies in the areas of
`
`telecommunication, computing, networking, and consumer electronics. The Institute of
`
`Electrical and Electronic Engineers (“IEEE”) originally standardized Bluetooth as IEEE
`
`Standard No. 802.15.1, but no longer maintains that standard. The Bluetooth SIG now
`
`oversees development of the specification, manages the qualification program for devices
`
`which state that they support Bluetooth connectivity. To advertise having that connectivity,
`
`a device manufacturer must meet the Bluetooth SIG standards so as to market their product
`
`
`
`16
`
`PINN-2014 18
`
`
`
`
`
`as a Bluetooth device. A current version of the Bluetooth Core Specification (Revision 5.2
`
`dated 12/31/2019) can be found in Pinn’s document production at PINN-175166 – 178421.
`
`C. Distributed Intelligence
`
`47. Also known as “distributed logic,” distributed intelligence refers to assigning
`
`the data processing needed by a system to multiple data processing subsystems. As a result,
`
`portions of the system’s overall processing requirements are implemented by separate
`
`computers or processors. Such separation allows multiple processors (computers) to
`
`operate in cooperation to implement the system’s processing requirements.
`
`IV. OVERVIEW OF THE ’066 PATENT
`
`48. The title of the ’066 patent is “Mobile System With Wireless Earbud.” The
`
`named inventor is Seung Jin Kim. The application that led to the issuance of the ’066 patent
`
`(Appl. No. 15/563,937) was filed on October 2, 2017, as a national stage entry of
`
`application No. PCT/US2016/025936 filed on April 4, 2016. That application was
`
`preceded by Provisional application No. 62/142,978 which was field on April 3, 2015. The
`
`’066 patent was issued on October 22, 2019.
`
`49. The Abstract of the ’066 patent states: “The disclosure herein provides a
`
`personal wireless media station including a main body and a wireless earbud. The personal
`
`wireless media station may detect that the wireless earbud is docked to the base station,
`
`play sound through a speaker of the base station while the wireless earbud is docked to the
`
`base station, detect that the wireless earbud is undocked from the base station, cease to play
`
`
`
`17
`
`PINN-2014 19
`
`
`
`
`
`sound through the speaker of the base station in response to detecting that the wireless
`
`earbud is undocked from the base station, and cause sound to begin playing through the
`
`wireless earbud while the wireless earbud is undocked from the base station.”
`
`50. The ’066 patent contains 38 claims. During prosecution, the patent Examiner
`
`allowed each of those 38 claims. In this proceeding, I understand that of these claims, only
`
`claims 1, 4, 6, 9, 10, 14, 21, 30, 34, 36 and 38 are being challenged.
`
`51.
`
`In addition to the claim language itself, in my opinion a POSA would be
`
`informed by Figs. 1, 2, 3, 4A, 4B, 10 and the associated text from the ’066 specification
`
`including, but not limited to, 4:61-12:23 and 17:15-46, in order to understand the
`
`relationship between the wireless earbud, the main body, and the other elements of the
`
`challenged claims.
`
`52. As I noted above, Technical Special Master Keyzer issued a Report and
`
`Recommendation on Claim Construction (“Claim Construction Order” or PINN-2006) on
`
`June 29, 2020 in the parallel litigation. The Claim Construction Order provides, for
`
`example, the following constructions:
`
`Challenged
`Claim
`
`Asserted Claims in
`which the claim term
`appears
`
`’066: 1, 10,
`30, 34
`
`“Wirelessly pairing” /
`“wireless pairing”
`
`’066: 1, 10,
`30, 34
`
`“wirelessly paired”
`
`Mr. Keyzer’s Construction
`
`“establishing a trusted relationship
`between two devices that allows them to
`communicate wirelessly”
`“a trusted relationship is established
`between two devices that allows them to
`communicate wirelessly”
`
`
`
`18
`
`PINN-2014 20
`
`
`
`
`
`’066: 1, 10,
`30, 34
`
`
`’066: 9, 10,
`30, 34
`
`
`
`
`
`“smartphone”
`
`“mobile device that can communicate on a
`cellular network (and can do so without
`needing to communicate through another
`device), that can perform many of the
`functions of a computer, and that can be
`held by hand”
`
`“mobile application”
`
`“a software application installed on a
`mobile computing device”
`
`53.
`
`I have used these constructions in forming my opinions as expressed herein.
`
`54.
`
`I reserve the right to reconsider my opinions and provide additional opinions
`
`if the Claim Construction Order is modified by the court, or if the Board’s constructions
`
`differ from those of the Special Master in the parallel proceeding.
`
`V. CLAIMS 1 & 9 OF THE ’066 PATENT ARE ENTITLED TO THE PRIORITY
`DATE OF APRIL 3, 2015
`
`
`
`55.
`
`In section IV(C) of his declaration Dr. Cooperstock asserts that claims 1, 10,
`
`30, and 34 and all claims related dependent claims of the ’066 Patent are not supported by
`
`the 0’978 Provisional filed on April 3, 2015, because according to Dr. Cooperstock,
`
`“claims 1, 10, 30, and 34 do not have written description support in the ’978 Provisional.”
`
`Cooperstock Declaration at ¶ 24. I disagree.
`
`56.
`
`I understand that for a claim in a later-filed application to be entitled to the
`
`filing date of an earlier application, the earlier application must comply with the written
`
`description requirement of 35 U.S.C. § 112 and enable a POSITA to practice the invention,
`
`
`
`19
`
`PINN-2014 21
`
`
`
`
`
`which requires that the specification contain a written description of the invention and the
`
`manner and process of making and using it.
`
`57. Here, the proper test to determine whether the challenged claims are entitled
`
`to the priority date of the ’978 Prov
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