Perfect Company v. Adaptics Limited

Western District of Washington, wawd-3:2014-cv-05976

DECLARATION In Support of Perfect's Responsive Claim Construction Brief of David Howell by Plaintiff Perfect Company

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2 1 2 THE HONORABLE RONALD B. LEIGHTON 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 WESTERN DISTRICT OF WASHINGTON 10 11 PERFECT COMPANY No. 3:14-cv-05976-RBL 12 Plaintiff, (Consolidated with 3:17-cv-05922-RBL) v. 13 ADAPTICS LIMITED, and 14 Defendants. 15 16 17 _________________________________________________________ 18 DECLARATION OF DAVID S. HOWELL 19 REGARDING CLAIM CONSTRUCTION OF U.S. PATENT NO. 9,772,217 B2 20 _________________________________________________________ 21 22 23 24 25 26 27 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 1 2 1 2 I, DAVID S. HOWELL, having personal knowledge declare as follows: 3 4 1. I am engaged as an expert by Perfect Company in connection with the 5 captioned proceeding to provide my analyses and opinions on certain technical aspects of this 6 dispute, including my opinion on construction of certain terms within, and infringement of 7 certain claims, of U.S. Patent No. 8,829,365 B2 (hereinafter "the '365 Patent") and U.S. 8 Patent 9,772,217 B2 (hereinafter "the '217 Patent") by Adaptics Limited ("Adaptics"). 9 2. I am an expert in the fields of software engineering, mobile application design 10 11 and development, software architecture and systems, and graphical user interface (GUI) 12 design and implementation. In formulating my opinions, I have relied upon my training, 13 knowledge, and experience in the relevant art. A copy of my curriculum vitae, a true and 14 correct copy of which is attached as Exhibit "A" hereto, provides a description of my 15 professional experience, including my academic and employment history, publications, 16 patents, and patent applications. 17 3. I am currently working as an entrepreneur running two companies that 18 develop and sell software and hardware for mobile devices. 19 20 4. I received a Bachelor of Science degree in Computer Science and 21 Engineering, with High Honors, from Case Western Reserve University in 1986. I received 22 a Bachelor of Arts degree in Music, Cum Laude, from Case Western Reserve University in 23 1987. I received dual Master of Business Administration degrees both from Cornell 24 University's Johnson School of Business and from Queen's University's Smith School of 25 Business in 2008. 26 27 5. I have been writing desktop and mobile computer software since 1978. In 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 2 2 1 2 1987, my first job after receiving my undergraduate degrees involved writing real-time MIDI 3 drivers for the Apple IIgs and the Macintosh, for a pioneering MIDI firm called Passport 4 5 Designs. My drivers performed input and output operations via the serial ports, 6 communicating with a MIDI adapter. The timers for these drivers were incremented by 7 programmable hardware interrupts. Interrupt handlers afforded the timers the guaranteed 8 timed response that was required by a real-time musical environment. The MIDI drivers were 9 interesting from a real-time perspective because there were two different types of real-time 10 requirements: (1) a an interrupt-driven timer had to keep track of position within a musical 11 sequence, send NOTE ON and NOTE OFF, as well as and other MIDI commands, at the 12 appropriate time, while also recording note and other device data received from connected 13 MIDI devices, and (2) the serial port communications were event-driven by interrupts from 14 the serial-port hardware. 15 16 6. For MIDI drivers, failure is catastrophic, in the non-fatal sense, in that if the 17 drivers failed to send a NOTE OFF command, they could leave a musical note playing 18 indefinitely, resulting in cacophony and irritated musicians. Similarly, sending or recording 19 notes and other data a fraction of a second late could yield perceptible rhythmic inaccuracy. 20 7. In the late 1980's I wrote real-time Laserdisc drivers for the Apple II, under 21 contract to Lucasfilm at Lucas Valley Ranch. These drivers also drove serial port 22 23 communications, this time with Laserdisc player devices. Missed interrupts would generate 24 communication failures that could not only yield perceptible presentation flaws but even 25 potentially damage the player head or the disc. 26 8. In the 1990s, I was employed as the Lead Software Engineer by an early 27 pioneer in desktop video, a company called New Video Corporation, which was the first joint 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 3 2 1 2 venture between Apple Computer and Intel. My software drove a desktop video card called 3 EyeQ. The software had hard real-time requirements, in that badly timed video frames or of 4 5 audio packets could variously yield video "stuttering," ghosting (from dropped inter-frame 6 compressed frames), audio stuttering and pops, and other visual or audible artifacts. In some 7 cases missed interrupts could cause buffer runs that could result in crashing and data loss. 8 9. Later in the 1990s, I completed several game programming contracts, 9 primarily contract work that entailed porting DOS games to Mac and to the Sony Playstation. 10 My game clients included Hasbro, Westwood Studios, Realtime Associates, Zombie Games, 11 and other game publishers. These games all needed to respond very quickly to user actions 12 and, optimize presentation frame rates, especially in the case of the Sony Playstation game, 13 14 which had to adhere strictly to a 60-frame-per-second presentation rate. 15 10. From 2002 to 2008, I worked at Apple Inc in the Pro Apps division, where of 16 course real-time video and audio playback were requirements, to one degree or another, in 17 all of our products. 18 11. Since 2008 I have owned and have been running a mobile apps company 19 called Avatron Software, one of the first mobile apps firms. Avatron's most successful 20 21 product is Air Display, which allows users to employ an iPad or Android tablet as a monitor 22 for a Mac or PC, or even a Mac or PC as an extra monitor for another Mac or PC. Air Display 23 does this via the use of virtual video drivers, which have real-time requirements for copying, 24 compressing, sending, decompressing, and presenting smooth playback of video frames. 25 12. In short, I have been involved in developing real-time software for the past 26 thirty years, and am well versed in the requirements. 27 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 4 2 1 2 13. I have reviewed the '365 Patent and the '217 Patent and the prosecution 3 history for each, including the reexamination of the '365 Patent. I have reviewed Perfect 4 5 Company's ("Perfect's") Perfect Drink® and Perfect Bake® products and Defendants Drop 6 Kitchen Recipe App and Drop Scale (collectively "the Drop Product"). 7 14. I have reviewed discovery responses in this case, and interviewed the 8 inventors of the '365 Patent and '217 Patent. I have done a source code inspection of some 9 of the firmware and software app source code for the Drop Product. 10 11 15. I have reviewed the expert reports of Dr. Direen on invalidity of the '365 12 Patent and claim construction for the '217 Patent. I was present for the two depositions of 13 Dr. Direen on both expert reports. 14 Level of Ordinary Skill in the Art 15 16. I understand that claims are read and construed from the perspective of a 16 Person Having Ordinary Skill In The Art ("PHOSITA") of the '365 Patent and the '217 17 18 Patent. 19 17. The '365 Patent and the '217 Patent are directed to systems involving 20 computer science, as well as electrical engineering. 21 18. A person having ordinary skill in the art (PHOSITA) in the field of the 22 computer science at the time of invention would be expected to have a Bachelor of Science 23 in Computer Science (alternatively Electrical Engineering or Physics with a significant focus 24 25 on computer engineering, design, and programming) or equivalent training, and 26 approximately two years of practical programming experience involving communication 27 with peripheral devices. Alternatively, eight years of practical working experience across a 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 5 2 1 2 range of computer science areas (e.g., operating systems, drivers design and programming) 3 could substitute for formal education. 4 5 19. Defendant has offered several different definitions for a PHOSITA during the 6 course of my engagement. After hiring Dr. Direen, Defendant asserted that a PHOSITA 7 would need a significant background in "control systems and real-time embedded systems 8 including hardware and embedded software design relating to weigh scales." As I recall, 9 Defendant's first expert (presented during the reexamination of the 365 Patent) had no such 10 qualification, and yet, Adaptics asserted that he was an expert in the field. 11 12 20. Defendant's latest assertion regarding the qualification of a PHOSITA do not 13 make sense for other reasons. 14 21. I interviewed one of the inventors of the'365 Patent and the '217 Patent, 15 Phillip Odom, who created the prototype scale for Perfect's invention. He, like I, did not 16 have a background in designing weigh scales at the time that he created a working prototype 17 system. He necessarily possesses the ordinary skill of that aspect of the art since he is the 18 one who adapted the prototype scale and wrote the firmware for it. As such, Dr. Direen's 19 opinion is contradicted by Adaptics' prior position and the actual experience of the inventor. 20 21 22. Notably, the patent also includes the terms "electronic display," "computing 22 device," and "culinary," but Defendant is not arguing that a PHOSITA needs to be display 23 engineer, a computer hardware designer, or a restauranteur. 24 23. It is my opinion that a person having ordinary skill in the relevant art does not 25 need any expertise in "control systems and real-time embedded systems including hardware 26 27 and embedded software design relating to weigh scales," as Defendant suggests. Again, Mr. 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 6 2 1 2 Odom did not, and he created a working example prior to applying for the patent(s). Further, 3 the phrase in Defendant's proffered level of skill, "electrical and/or computer engineer" 4 5 (emphasis added) implies that software engineering skills are optional for a PHOSITA. To 6 the contrary, software engineering skills are a fundamental minimum requirement, while 7 electrical engineering is optional. 8 24. I reviewed the declarations and reports of Defendant's experts Gosling and 9 Direen, and I was present for both of Dr. Direen's depositions. In my opinion, Dr. Direen 10 views the invention through the lens of a senior electrical engineer with deep experience and 11 education in control systems. Conversely, he does not have any experience in mobile app 12 programming or mass manufactured consumer electronics development. 13 14 25. The '217 Patent specifically states: that the "culinary ratio system 100 has a 15 software app on the smart device 104 which is configured to receive real-time information 16 from the smart scale." '217 Patent Col.4, lns 38-40. The use of the term "app" generally, but 17 not always refers to applications on smart phones tablets, and smart watches. The passage 18 also makes clear, however, that the software app is on the smart device, distinguished from 19 the smart scale. 20 21 26. In other words, Dr. Direen claims no experience at all in the principal subject 22 matter of the claims at hand, namely consumer product development and mobile application 23 design and development. Dr. Direen has created some back-end software and software tools 24 to be used by hardware test engineers, but admitted in his deposition no experience in 25 developing consumer-facing software. The principal subject matter of the '217 patent is 26 directed to system design and software design of consumer kitchen products. 27 27. Defendant points to my lack of professional "experience in the weigh scale 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 7 2 1 2 industry." In this context that is as irrelevant as pointing to the lack of any reference to LCD 3 manufacturing, computer manufacturing, or restaurant operations on Dr. Direen's 4 5 Curriculum Vitae. I have in fact worked for an LCD manufacturer, a computer manufacturer, 6 and a restaurant. But, like direct experience in the weigh scale industry, I maintain that such 7 experience is not required in order to fully comprehend the patents in question. 8 28. I have hired and managed dozens of engineers in the past and am well aware 9 of their unique qualities. Dr. Direen's narrow background in electrical engineering and 10 industrial weighing systems is problematic for a number of reasons. His hardware focus 11 skews his assessment pertaining to software design. In my career as a technology executive, 12 I have observed that people skilled in one art, whether it be electrical engineering, finance, 13 14 marketing, or any other field, often underestimate the skill required to do what people skilled 15 in other arts do. For example, many engineers think marketing requires little hard intelligence. 16 Many investors consider engineers as commodities. And to the point, hardware engineers 17 tend to think that software design is easy, and that there is little inventiveness in creating 18 intuitive user experiences. 19 29. Dr. Direen's lack of experience designing consumer products, and especially 20 consumer software, underlines his heavy focus on hardware. Without a background designing 21 intuitive, easy-to-use consumer user interfaces, he seems not to appreciate usability nuances 22 23 that are essential to a system. 24 Computing Device 25 30. Defendant wants to interpret "computing device" as a "device that computes." 26 However, this construction would include an abacus, a handheld calculator, a supercomputer, 27 space navigation system, and an embedded processor on a smart shoe. In my opinion, a 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 8 2 1 2 PHOSITA would not interpret the term that way in view of the patent's specification that 3 consistently and exclusively describes a kitchen environment. 4 5 31. The 217 Patent limits the scope of "computing device" in the parenthetical 6 following "smart device 104." This necessarily excludes that "smart scale" element that 7 following in the same sentence even though a smart scale would otherwise also be a "device 8 that computes" since it has a processor and firmware. 9 32. It is my understanding that a patentee can redefine terms in the specification. 10 11 In my opinion, the PHOSITA would interpret the specification as setting the "smart device" 12 apart from the universe of devices that compute, and that "computing device" was defined to 13 be this subset. 14 Scale 15 33. In my opinion, a PHOSITA reading the '365 and '217 Patents would not 16 assign the standard English meaning to "scale." Customary and ordinary meanings of "scale" 17 18 include musical scales, fish scales, flaky deposits, and weigh scales. Even a cursory review 19 of the specification compels the conclusion that "scale" refers to a digital kitchen scale. The 20 '217 patent specification provides a detailed discussion of using a digital kitchen scale and 21 mixology workflows. 22 34. In my opinion, a PHOSITA would not associate the '217 Patent with balance 23 scales, scales used for weighing tractor trailer trucks and similar scales (typically weighing 24 tens of thousands of pounds with error rates in tens or even hundreds of pounds). Rather, the 25 scale in question is a "smart scale" ('217 Patent, Col. 4:29-32) -- digital, with an operating 26 27 range suitable for kitchen use, capable of communicating data to a computing device in real 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 9 2 1 2 time. Reviewing the patent, there does not appear to be any other embodiment disclosed for 3 "scale." 4 5 35. In view of the specification, "scale" is just a shorthand for a smart, digital 6 kitchen scale. Thus, it should be interpreted as "a cabled or wireless smart kitchen scale 7 configured to be in communication with a smart device to provide real-time data." 8 Period of Inactivity 9 10 36. Defendant asserts that "period of inactivity" is a scale-specific term and can 11 only be understood by a PHOSITA in the field of weigh scales. In my opinion, this term is 12 readily understood by any technical or even non-technical observer. It doesn't require any 13 specific knowledge. The plain meaning of "period of inactivity," refers to a method of 14 determining that the user wants to automatically advance to the next step. In practical use, a 15 pause in the recipe process can have different causes. For example, when a person switches 16 ingredients in the mixology example of the patent, there will be a period of time when the 17 user places one bottle at rest, picks up the bottle containing the next ingredient, begins to 18 pour, and the scale begins to register a change. A pause will also occur, when a person adding 19 an ingredient runs out (that is, empties the first bottle) and begins pouring from a second 20 21 bottle to complete the recipe step. The "period of inactivity" is measured by a threshold value 22 that the system uses to attempt to distinguish between these two types of pauses. The 217 23 Patent plainly describes this, and further specifies that the period may be set by the user. In 24 fact, a PHOSITA would expect that some users might require more time before an automatic 25 advance to allow for their own physical condition. 26 37. It should also be clear to the lay person that the "period of inactivity" is 27 essentially a countdown that begins when the measured weight stabilizes. The criteria for 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 10 2 1 2 stabilization may be a number of measurements (at least two) in which the change is 3 measured weight reading is negligible or zero. After that event occurs, the countdown (i.e., 4 5 the "period of inactivity) begins using a number that is predetermined regardless of whether 6 it is a system default value or as set by the user. If the measured weight changes before the 7 countdown reaches zero, then the system assumes that the user is continuing with the current 8 step. If the countdown reaches zero, then the system assumes that the user has finished with 9 the current step, and the auto advance occurs. Notably, a PHOSITA would not confuse the 10 stabilization event with the "period of inactivity." 11 38. Conversely, Defendant's assertion that a period of inactivity can be 12 determined by two consecutive weight readings without any measured weight change does 13 14 not make any sense in the context of the 217 Patent or the examples that are stated therein. 15 Two consecutive measurements can be made in a tiny fraction of a second, far less than the 16 time that elapses between retrieving spoonfuls of an ingredient or switching bottles as above. 17 Such an interpretation of the phrase would result in a false positive (that is, an automatic 18 advance) for virtually every step involving a weight change, resulting in an unusable user 19 experience. In sum, it is my opinion that Defendant attempting to equate the stabilization 20 event with the subsequent "period of inactivity" or in the alternative, Defendant is trying to 21 interpret "period of inactivity" divorced from the context of the '217 Patent specification. 22 23 Clarification regarding prior testimony 24 39. In view of Adaptics' distortion of my prior testimony, some clarification is 25 required. During the deposition, Adaptics' counsel asked me many questions about certain 26 words divorced from their use in the claims or specification. When an objection was raised, 27 Adaptic's counsel typically stated that he was asking about various terms without limitation, 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 11 2 1 2 that is, independent of the 217 Patent. So, when I was asked if a scale display was an electric 3 display, I said it was. I used electric display in its ordinary sense, because the scale uses 4 5 electricity. 6 40. At the time, I did not recall that there are two instances of typographical errors 7 in two of the claims, Claim 11 and 12 (both of these claims expressly locate the "electronic 8 display" on the "computing device"), where Perfect had used the word "electric display" 9 instead of "electronic display." 10 11 41. In the patent, the term "electronic display" is used 30 times, and "electric 12 display" only twice, and in locations showing it clearly is a typo meant to be "electronic 13 display." In any case, I had apparently glossed over that, because everywhere else the term 14 used "electronic display." I did make very clear in the deposition, however, that the scale 15 display was not an "electronic display" in the context of the 217 Patent, given the very clear 16 differentiation in the specification and prosecution history between an electronic display and 17 a scale display. 18 42. Defendant further asserts that I erroneously read the file history because I 19 referred to the original filing of the '365 Patent and neglected to qualify that as the original 20 21 "non-provisional" patent application. Dkt 265 p. 11-12. Of course, that's what I meant and I 22 believe Mr. Patek knew that I was referring to the correct document. 23 24 I CERTIFY under penalty of perjury of the laws of the United States the foregoing to 25 be true and correct to the best of my recollection and belief. 26 DATED THIS October 2, 2018 27 In Lake Oswego, Oregon DAVID S. HOWELL 28 DECLARATION OF DAVID S. HOWELL 29 (14-cv-05976-RBL) 10/2/2018 5:03:45 PM PURI.035 Page 12