Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 937

Declaration of Andries van Dam in Support of #930 Administrative Motion to File Under Seal Samsung's Motion for Summary Judgment filed bySamsung Electronics Co. Ltd.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4)(Related document(s) #930 ) (Maroulis, Victoria) (Filed on 5/18/2012)

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
 [e-mail]
50 California Street, 22nd Floor
 San Francisco, California 94111
Telephone: [phone]
 Facsimile: [phone]
 Kevin P.B. Johnson (Cal. Bar No. 177129)
[e-mail]
 Victoria F. Maroulis (Cal. Bar No. 202603)
[e-mail]
 555 Twin Dolphin Drive 5th Floor
Redwood Shores, California 94065
 Telephone: [phone]
Facsimile: [phone]

Michael T. Zeller (Cal. Bar No. 196417)
 [e-mail]
865 S. Figueroa St., 10th Floor
 Los Angeles, California 90017
Telephone: [phone]
 Facsimile: [phone]
 Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
 AMERICA, INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC



UNITED STATES DISTRICT COURT



NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

 APPLE INC., a California corporation,

CASE NO. 11-cv-01846-LHK



DECLARATION OF ANDRIES VAN
DAM, PH.D. IN SUPPORT OF
SAMSUNG’S MOTION FOR SUMMARY
JUDGMENT REGARDING THE
INVALIDITY OF U.S. PATENT NO.
7,469,381



Plaintiff,
vs.

 SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
 ELECTRONICS AMERICA, INC., a New
York corporation; SAMSUNG
 TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,

Defendants.




02198.51855/4749987 2

Case No. 11-cv-01846-LHK
DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

I, Andries van Dam, declare:

2

1.

I am a tenured professor in the Computer Science department of Brown

3

University, where I hold the position of Thomas J. Watson, Jr. University Professor of

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Technology and Education Chair and am also a Professor of Computer Science. I have been

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retained by counsel for Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. and

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Samsung Telecommunications America, LLC (collectively, "Samsung") as an expert in the

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above-captioned case. As part of that engagement I have been asked to provide analysis and

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expert opinions on the invalidity of claim 19 (the "Asserted Claim") of U.S. Patent No. 7,469,381

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(the "'381 patent").

10

2.

I submit this declaration in support of Samsung’s Motion for Summary Judgment

11

regarding the invalidity of the '381 patent. If asked at hearings or trial, I am prepared to testify

12

regarding the matters I discuss in this declaration.

13
14

3.

information that is relevant to my opinions.

15
16

4.

I am being compensated for my work in this matter at the rate of $1000 per hour

plus expenses. My compensation is in no way tied to the outcome of this matter.

17 I.
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I reserve the right to supplement or amend this declaration based on any new

PROFESSIONAL BACKGROUND
5.

I received a B.S. in Engineering Sciences from Swarthmore College in 1960, and

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an M.S. and Ph.D. in Electrical Engineering from the University of Pennsylvania in 1963 and

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1966 respectively.

21

6.

I have taught at Brown University since 1965, where I started as an Assistant

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Professor teaching Computer Science in the Division of Applied Mathematics.

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became a tenured Associate Professor of Applied Mathematics, and in 1972, I was promoted to

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Full Professor.

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Science continuously since 1965.

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Chairman of the Computer Science Program (1976-1979), Founding Chairman of the Department

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of Computer Science (1979-1985), L. Herbert Ballou University Professor Chair (1992-1995),

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02198.51855/4749987 2

In 1968, I

In 1976, I became a Professor of Computer Science, and have taught Computer
I have held various positions at Brown University, including

Case No. 11-cv-01846-LHK
-1DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

Thomas J. Watson, Jr. University Professor of Technology and Education Chair (1995-present),

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and Vice President for Research (2002-2006). I have also served as a visiting professor on

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Sabbatical leave to teach and start research groups in Computer Graphics at University of

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Nijmegen in the Netherlands and University of Geneva in Switzerland.

5

7.

I have also served as the Director of the National Science Foundation Science &

6

Technology Center for Computer Graphics and Scientific Visualization (the STC).

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was physically located across 5 universities, including Brown and ran for its allotted 11 years,

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with its financial home at the University of Utah. In my role as director, which I filled for three

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years, I was logistically responsible for the operation and the research programs of the Center.

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8.

The STC

While on my year’s Sabbatical at the University of Geneva in 1978-79 I was also

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Visiting Scientific Associate at CERN, the European Nuclear Research Institute in Geneva and

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was invited back for many visits to consult and lecture.

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Associate, I co-designed a special-purpose microcomputer specializing in fast event processing

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for handling data from physics experiments, and its microprogramming, and gave various

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lectures. My subsequent visits generally involved consultation on a variety of subjects relating

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to workstations, scientific visualization, and hypermedia.

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9.

While at CERN as a Visiting Scientific

I have over forty years of experience in the fields of computer graphics,

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hypermedia systems, and user interfaces.

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relating to pen- and touch-centric computing, educational software, and electronic book authoring

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and delivery systems.

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Research Council Reports.

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in the past two decades have been primarily focused on the area of interaction in immersive

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virtual environments and scientific visualization, with a recent focus on pen- and touch-

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computing.

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on Microsoft Surface devices, using both research-based and commercial devices. I have most

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recently focused on applications in digital humanities (or, as it has become known,

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"ehumanities").

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02198.51855/4749987 2

In my research, I have recently worked on projects

I have authored or co-authored 120 articles, 9 books, and 3 National
I have presented over 44 invited lectures since 2000.

My lectures

I have publicly shown work on pen computing on tablet PCs and touch computing

For example, I worked on a humanities project called Large Artwork Displayed

Case No. 11-cv-01846-LHK
-2DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

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on the Surface (LADS) for examining large pieces of artwork on any touch-enabled surface

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supported by Windows 7. I also recently helped design a scholarship tool to allow users to easily

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create selections of hyperlinked multimedia documents, entitled WorkTop.

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a Microsoft Surface, my students had built our own “touch table,” a “home brew” prototype

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touch device, for which we had created multiple applications. My group’s most recent work on

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touch computing has been sponsored by both Microsoft Research and Sharp. I have shown

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multiple unpublished projects using touch computing at the annual Microsoft Faculty Summit.

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My group and I have also produced the Garibaldi Panorama Application, a precursor to LADS,

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which was shown to thousands of people as a key exhibit in a special exhibit at British Library on

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the future of digital scholarship.

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12

Before we acquired

10.

I have worked as an expert in several legal matters as a consulting expert and an

expert witness. I have written expert reports and have had my deposition taken.

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11.

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my qualifications.

15 II.
16

I attach as Exhibit 1 my curriculum vitae¸ which includes a more detailed list of

APPLICABLE LEGAL PRINCIPLES
12.

In this section I describe my understanding of certain legal standards.

17

been informed of these legal standards by Samsung’s attorneys.

18

I have

relying only on instructions from Samsung’s attorneys for these legal standards.

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20

A.
13.

I am not an attorney and I am

Summary Judgment
I am informed that summary judgment is appropriate when there is no genuine

21

issue as to any material fact and the party moving for summary judgment is entitled to judgment

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as a matter of law.

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no genuine issue of material fact exists. Once the moving party demonstrates that there is no

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genuine issue of material fact, the nonmoving party must designate specific facts showing that

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there is a genuine issue for trial. I am informed that there is no genuine issue of material fact if

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the evidence is of insufficient caliber or quantity to allow a rational finder of fact to find for the

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nonmoving party.

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I am informed that the movant bears the initial burden of demonstrating that

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-3DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

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14.

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disputed.

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B.

I submit this declaration with the understanding that the facts I rely upon are not

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15.

Legal Standard for Prior Art
I am informed that "prior art" includes public information, public knowledge, and

5

public acts that occur before an application for a patent was filed.

6

journals, Internet publications, systems, products and prior inventions.

7

16.

Prior art includes patents,

I am further informed that Section 102 of the Patent Act provides that "[a] person

8

shall be entitled to a patent unless . . . (a) the invention was known or used by others in this

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country, or patented or described in a printed publication in this or a foreign country, before the

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invention thereof by the applicant for patent, or . . . (b) the invention was patented or described in

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a printed publication in this or a foreign country or in public use or on sale in this country, more

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than one year prior to the date of the application for patent in the United States, or . . . (e) the

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invention was described in . . . (2) a patent granted on an application for patent by another filed in

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the United States before the invention by the applicant for patent, . . . or, (f) he did not himself

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invent the subject matter sought to be patented, or (g) . . . (2) before such person's invention

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thereof, the invention was made in this country by another inventor who had not abandoned,

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suppressed, or concealed it."

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17.

Under Section 102 of the Patent Act, claims may be invalidated for lack of

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novelty. I have been informed by counsel that a claimed invention is invalid for anticipation or

20

lack of novelty when all of the limitations of the claim as construed by the Court are present in a

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single prior art reference. I am informed by counsel, however, that all limitations of the claim

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need not be shown directly so long as all limitations are necessarily present in the single prior art

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reference and thus are inherent.

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18.

I am informed that the evidence must be “clear and convincing” for a patent to be

found invalid.

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-4DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

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2

C.
19.

Legal Standard for Anticipation
I am informed by counsel that, once the claims of a patent have been properly

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construed, the second step in determining anticipation of a patent claim requires a comparison of

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the properly construed claim language to the prior art on a limitation-by-limitation basis.

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20.

I am informed by counsel that a prior art reference “anticipates” an asserted claim,

6

and thus renders the claim invalid, if all elements of the claim are disclosed in that prior art

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reference, either explicitly or inherently (i.e., necessarily present or implied).

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informed by counsel that the reference does not need to disclose the same purpose or problem to

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be solved as in the patent in order to anticipate the patent, unless the purpose is one of the claim

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limitations.

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21.

I am further

12
13

I submit this declaration with the understanding that anticipation must be shown

by clear and convincing evidence.
22.

I am informed by counsel that a patent is anticipated if before such person’

14

invention thereof, the invention was made in this country by another inventor who had not

15

abandoned, suppressed, or concealed it.

16
17

D.
23.

Legal Standard for Obviousness
I am informed by counsel that even if a patent is not anticipated, it is still invalid if

18

the differences between the claimed subject matter and the prior art are such that the subject

19

matter as a whole would have been obvious at the time the invention was made to a person of

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ordinary skill in the pertinent art.

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hypothetical person who is presumed to be aware of all the pertinent art. I am informed by

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counsel that a person of ordinary skill in the art provides a reference point from which the prior

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art and claimed invention should be viewed.

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own insight or hindsight in deciding whether a claim is obvious.

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24.

I further understand that a person of ordinary skill is a

This reference point prevents one from using her

I have been informed that claims directed to a combination of familiar elements

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according to known methods are invalid as obvious when the combination does no more than

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yield predictable results.

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Case No. 11-cv-01846-LHK
-5DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

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25.

I am informed by counsel that practical and common sense considerations should

2

guide a proper obviousness analysis, because familiar items may have obvious uses beyond their

3

primary purposes.

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improve one device, and a person of ordinary skill in the art would recognize that it would

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improve similar devices in the same way, using the technique is obvious unless its actual

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application is beyond her skill.

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26.

For example, I am informed by counsel that if a technique has been used to

I am informed by counsel that an obviousness evaluation can be based on a

8

combination of multiple prior art references. I understand that prior art references themselves

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may provide a suggestion, motivation, or reason to combine elements of multiple prior art

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references in the way the claimed new invention does.

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linking two or more prior art references or practices may be simple common sense.

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27.

I further understand that the nexus

I am informed by counsel that a claim can be obvious in light of a single reference,

13

without the need to combine references, if the elements of the claim that are not found explicitly

14

or inherently in the reference can be supplied by the common sense and knowledge of one of

15

skilled in the art.

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28.

I am informed by counsel that obviousness analysis takes into account the

17

inferences and creative steps that a person of ordinary skill in the art would employ under the

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circumstances, because a person of ordinary skill in the art looking to overcome a problem will

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often be able to fit the teachings of multiple publications together like pieces of a puzzle.

20 III.
21
22
23

CLAIM CONSTRUCTION
29.

In conducting my analysis of the '381 patent claims, I have applied the legal

understandings set out in this declaration.
30.

I understand that the Court has issued claim construction regarding the term "edge

24

of the electronic document" for the '381 patent to have its plain and ordinary meaning. In

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particular, the Court emphasized that the "edge of the electronic document" is not limited to an

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external edge, but may include an internal edge.

(Order Construing Disputed Claim Terms of

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Case No. 11-cv-01846-LHK
-6DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

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U.S. Patent Nos. 7,698,711; 6,493,002; 7,469,381; 7,663,607; 7,812,828; 7,844,915; and

2

7,853,891 (Dkt No. 849) at 23.) I adopt this construction for my analysis in this declaration.

3

31.

I understand that the Court interpreted the claims of the '381 patent to be

4

"fatalistic" such that if a user scrolls past the edge of an electronic document in the first direction,

5

the screen must snap back to that document when the user lifts her finger.

6

Motion for Preliminary Injunction (Dkt No. 449) at 60.) I adopt this construction for my

7

analysis in this declaration.

8

32.

(Order Denying

I understand the Court has not provided a construction for “electronic document.”

9

In addition, the ’381 patent does not provide an explicit definition of “electronic document," and

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only provides a few examples. I interpret “electronic document” according to the construction

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Samsung proposed in its Patent Local Rule 4-2 disclosures, namely "information that is visually

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represented on a screen that has a defined set of boundaries." I understand that Dr. Balakrishnan

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14
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17

(8/26/2011 Deposition of Ravin Balakrishnan at 27:19-25,
attached hereto as Exhibit 2.)

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33.

I understand that the Court has not issued claim construction regarding other

19

disputed terms of the '381 patent. In this declaration, I have attempted to apply the claim

20

constructions that would be used by one of ordinary skill in the art.

21 IV.

OVERVIEW OF THE '381 PATENT AND THE ASSERTED CLAIMS

22

A.

23

34.

The '381 Patent Generally
The ‘381 patent, titled “List Scrolling and Document Translation, Scaling, and

24

Rotation on a Touch-Screen Display,” was filed on December 14, 2007 and issued on December

25

23, 2008.

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filed on January 7, 2007.

It claims priority to a number of provisional applications, the earliest of which was
The patent has one named inventor, Bas Ording.

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Case No. 11-cv-01846-LHK
-7DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1
2

35.

I understand that Apple is currently asserting that Samsung’s devices infringe

claim 19 of the '381 patent in the above-captioned case.

3

36.

Claim 19 is an independent claim.

The '381 patent generally relates to correcting the display of an electronic

4

document when a user has translated or scrolled past the edge of the document, i.e. "overscroll

5

correction."

6

37.

Independent claim 19 of the '381 patent discloses translating an electronic

7

document displayed on a touch screen display in response to detecting movement of an object on

8

or near the touch screen. The '381 patent claims a snap-back functionality where, if the user

9

translates an electronic document beyond the edge of that document, an area beyond that edge

10

will be displayed.

11

back, such that no area beyond the edge of the document remains in view.

12

Tablecloth/DTFlash application below will demonstrate, prior to 2007, others had developed the

13

functionality claimed by the '381 patent.

14

38.

When the user lifts her finger from the touch screen, the document will snap
As an analysis of the

Figure 7 of the '381 patent, reproduced below, describes an abstract, high-level

15

flow chart of the purported invention of the '381 patent ('381 patent at Fig. 7 and accompanying

16

text at col. 26:63-27:55). The steps which are enclosed by dotted outlines (with the exception of

17

the decision diamond 710) correspond to dependent limitations that are not currently asserted by

18

Apple.

19

asserted by Apple.)

(Box 722, which is missing the top edge, is also a dependent limitation not currently
The remaining steps provide a high-level flow chart of asserted claim 19.

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Case No. 11-cv-01846-LHK
-8DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

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Case No. 11-cv-01846-LHK
-9DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

39.

Figures 8A through 8D, reproduced below, are pictorial representations of the

2

results of translating an electronic document that is a web page to the edge of the document.

3

('381 patent at col. 28:34-57.)

4

area beyond the edge is displayed, as shown in Figure 8C. Once the object is no longer detected

5

near the touchscreen, the electronic document is translated in a second direction until the area

6

beyond the terminus of the list is no longer displayed, as shown in Figure 8D. ('381 patent at col.

7

25:19-22.)

8

40.

Once the edge of the electronic document has been reached, an

Figures 8A through 8D from the '381 patent are reproduced below:

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-10DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

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('381 patent at Figs. 8A to 8D.)
41.

For ease of explanation, I note that the elements of the asserted claims are (1) an

electronic document, (2) an area beyond the edge of the electronic document, and (3) the snapback translation from displaying an area beyond the edge until the area beyond the edge is no
longer displayed.
B.
42.

Priority Date
I am informed by counsel that the “critical date” for a patent is one year prior to its

filing date. I am informed that the critical date is significant because patents, systems, or
documents that are public prior to the critical date, if they disclose each and every limitation of
the claims, will invalidate a patent regardless of whether the inventors invented the claim prior to
the filing date of the patent.

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-11DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

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47.

MERL employees developed many applications for the DiamondTouch system

14

which were publicly demonstrated in trade shows and shown to customers and executives.

15

(Bogue Decl. ¶5.)

16

48.

Tablecloth was a simple demo application

(Forlines

17

Decl. ¶6) meant to showcase DTFlash, a software toolkit that allowed programmers to write

18

DiamondTouch-aware Macromedia/Adobe Flash applications. Tablecloth implemented a

19

feature that allows the user to use a finger to scroll an image inside a window.

20

the user may overscroll the image, lift his finger, and cause the image to snap back so that the

21

edges of the image align with the edges of the window’s content area.

22

49.

When scrolling,

Two published papers disclose DTFlash: Alan Esenther and Kent Wittenburg,

23

"Multi-User Multi-Touch Games on DiamondTouch with the DTFlash Toolkit," Mitsubishi

24

Electric Research Laboratories, TR 2005-105, Dec. 2005, and Alan Esenther, Cliff Forlines,

25

Kathy Ryall, Sam Shipman, "DiamondTouch SDK: Support for Multi-User, Multi-Touch

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Applications," Mitsubishi Electric Research Laboratories, TR 2002-48, Nov. 2002 ("MERL TR

27

2002-48"). These papers are attached as Exhibits 1 and 2 to the Declaration of Adam Bogue.

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Case No. 11-cv-01846-LHK
-13DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

50.

I understand that the DiamondTouch system was publicly available running

2

Tablecloth by at least by January 6, 2006, before the earliest possible critical date of the '381

3

patent, and is therefore prior art to the '381 patent.

4

declaration of and phone conversations with Adam Bogue, the Vice President of Business

5

Development at MERL who demonstrated Tablecloth/DTFlash to potential customers.

6

Decl. at ¶¶5, 9, and 12.

7 VI.

I base this understanding in part on the

Bogue

INVALIDITY OF THE '381 PATENT DUE TO ANTICIPATION BY
TABLECLOTH/DTFLASH

8
A.

Summary of Opinions

9
51.

I have compared the Tablecloth/DTFlash application with claim 19 of the '381

10
patent. I have reviewed the DiamondTouch system and the declarations and depositions of
11
Adam Bogue and Clifton Forlines in forming my opinion.
12
52.

In my opinion, Tablecloth/DTFlash discloses each and every limitation of claim

13
19.

In addition, in the event that Tablecloth/DTFlash does not disclose each and every

14
limitation of claim 19, in my opinion the claims would be obvious in light of the
15
Tablecloth/DTFlash system.
16
53.

In my opinion, the Tablecloth/DTFlash system discloses to one of ordinary skill in

17
the art how to practice or carry out the claims in sufficient detail, without requiring undue
18
experimentation.

One of ordinary skill viewing the Tablecloth/DTFlash system in operation

19
would understand how to practice or carry out the claims of the '381 patent.
20
54.

In any event I am informed that a public use need not enable the claims.

55.

Exhibits 3 and 4 are claim charts that provide an element-by-element analysis of

21
22
the Tablecloth/DTFlash system. As explained in greater detail in these exhibits, I offer two
23
examples of "electronic documents" that are found in Tablecloth/DTFlash.

I have also guided

24
and approved the preparation of videos attached as Exhibits 4 and 5 to the Declaration of Adam
25
Bogue.

These videos show the operation of Tablecloth/DTFlash and illustrate the invalidity

26
analysis under these two examples.

These exhibits are incorporated by reference into this

27
declaration.
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Case No. 11-cv-01846-LHK
-14DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

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56.

Below I also compare the limitations found in the '381 patent to the

Tablecloth/DTFlash system.
B.

Representative Example #1 (electronic document consists of primary image plus
secondary image)

4
57.

As I understand from Clifton Forlines, one of the MERL software engineers who

5
wrote code for the DiamondTouch,
6
. (Forlines
7
Decl. at ¶8.)

The purpose of the secondary image is to fill the window's content area vacated by

8
the primary image as it is scrolled from the "home position" where it fills the entirety of the
9
application window's content area. Thus, when the user scrolls (i.e. "translates") the primary
10
image upward, a strip of the secondary image is visible below the first instance to fill in the
11
vacated space.

Similarly, when the user scrolls the primary image downward, a strip of the

12
same secondary image is visible above the primary image to fill in the vacated space. The
13
appearance is thus of three identical images connected horizontal edge-to-edge, although there
14
are only two images in memory.
15
58.

Exhibit 3 to my report identifies in detail how each limitation of the '381 patent is

16
met by Tablecloth/DTFlash.

To place this chart in perspective, below are images showing the

17
key elements of the snap-back behavior in the case where the electronic document is the
18
combination of the primary and secondary image. The first screenshot shows the application
19
window with its light gray border (“chrome”) on the larger DiamondTouch table (blue
20
background on the bottom of each screenshot). The First Portion shows the primary image
21
(marked P) that has been scrolled down to show a strip (the green grass) of the secondary image,
22
(marked S) above the top edge of the primary image.

The second screen shot shows the finger

23
scrolling the primary image (P) upwards (the first direction) so it scrolls off the top and the
24
secondary image (S) fills in the bottom.

In the third screenshot the user continues to scroll the

25
electronic document upward in the first direction, past an area beyond the bottom edge of the
26
27
28

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Case No. 11-cv-01846-LHK
-15DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

electronic document, and the white area1 is the area beyond the edge.

2

the user then lifts her finger, causing the document to snap back. This action meets the key

3

limitations of the '381 patent which broadly require: (1) a first portion of the electronic document;

4

(2) a second portion in response to moving an object on the screen, (e.g. finger scrolling upward);

5

(3) a third portion and an area beyond the edge of the electronic document in response to the edge

6

being reached; and (4) a fourth portion with the area beyond the edge of the document no longer

7

displayed:

In the fourth screenshot,

8
9
10
11
12
13
14
15
16
17

59.

In this section, I analyze the electronic document as the combination of the

primary image and the secondary image.
(a)

18

Preamble

19

60.

The preamble states "A device, comprising."

20

61.

To the extent the preamble is a limitation, the Tablecloth/DTFlash application runs

21

on a device, the DiamondTouch system.
(b)

22

Element 1

23

62.

Element 1 of claim 19 recites "a touch screen display."

24

63.

The DiamondTouch table is a touch-screen display.

25

The DiamondTouch system

is designed so that a display is generated on the DiamondTouch table using a projector.

The

26
1
Although the screen images captured in this document make the area beyond the edge appear
27 gray, it is actually white when viewed on the DiamondTouch table.

28

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Case No. 11-cv-01846-LHK
-16DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

DiamondTouch table is touch-sensitive, such that touches and gestures on the table have a

2

corresponding effect on the display.

3

64.

In his Rebuttal Report, Dr. Balakrishnan argued that a touch-sensitive table with

4

an image displayed using a projector could not be a touch screen display. (Balakrishnan

5

Rebuttal Report at ¶¶115-122.)

6

Balakrishnan offered no basis for construing the term "touch screen display" more narrowly to

7

exclude a projector-based display, let alone providing a criterion for what is and what isn’t a

8

touch screen display in his opinion.

9

65.

However, he offered no explanation for this assertion.

Dr.

To the extent that this element is not anticipated by the Tablecloth/DTFlash

10

system, it would have been obvious to combine the Tablecloth/DTFlash system with an

11

integrated digitizer/display device such as an LCD or LED touchscreen. A person of ordinary

12

skill in the art would have understood that the display on the table could be generated by a variety

13

of different methods other than a projector, such as by using an LCD display.

14

(c)

Element 2

15

66.

Element 2 of claim 19 recites "one or more processors."

16

67.

The DiamondTouch table includes a processor in order to execute the source code

17

for Tablecloth/DTFlash.

18

otherwise.

19

(d)

The source code for Tablecloth/DTFlash could not be executed

Element 3

20

68.

Element 3 of claim 19 recites "memory."

21

69.

The DiamondTouch system includes the computer’s memory.

22

for Tablecloth/DTFlash could not be stored otherwise.
(e)

23
24

The source code

70.

Element 4

Element 4 of claim 19 recites "one or more programs, wherein the one or more

25

programs are stored in the memory and configured to be executed by the one or more processors,

26

the programs including."

27
28

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Case No. 11-cv-01846-LHK
-17DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

71.

The DiamondTouch system includes programs for Tablecloth/DTFlash stored in

2

the memory and configured to be executed by one or more processors.

3

could not function otherwise.

4

Tablecloth/DTFlash stored in the memory and configured to be executed by one or more

5

processors.

6
7
8

(f)
72.

Tablecloth/DTFlash

I have confirmed with Clifton Forlines that there are programs for

Element 5

Element 5 of claim 19 recites "instructions for displaying a first portion of an

electronic document."

9
10
11
12
13
14
15
16
17
18
19
20

73.

In this example, the electronic document consists of a primary image and a

21

secondary image which can appear above or below the primary image.

22

portion of the electronic document, in this case the primary image, is shown in the screenshot

23

above, outlined in black.

Under this example, a

24
25
26
27
28

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Case No. 11-cv-01846-LHK
-18DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1
2
3
4
5
6
7
8
9
10
11
12
13

74.

Translating the electronic document downward causes a first portion of the

14

electronic document to be displayed.

15

in black. It shows the top portion of the primary image (P) and the bottom portion of the

16

secondary image (S) on top of that.

17
18

(g)
75.

The first portion is depicted in the picture above, outlined

Element 6

Element 6 of claim 19 recites "instructions for detecting a movement of an object

19

on or near the touch screen display; instructions for translating the electronic document displayed

20

on the touch screen display in a first direction to display a second portion of the electronic

21

document, wherein the second portion is different from the first portion, in response to detecting

22

the movement."

23
24
25
26
27
28

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Case No. 11-cv-01846-LHK
-19DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1
2
3
4
5
6
7
8
9
10
11
12
13
14

76.

DiamondTouch will detect movement of a finger on the touch screen and translate

15

the electronic document in the direction of the movement of the finger.

16

portion referenced above, obtained by having previously scrolled the electronic document

17

downward, continuing from this position, if the user moves his finger upward, the electronic

18

document will move upward.

19

This second portion of the document is different from the first portion of the document.

20

depicted in the figure above, which shows that the primary image (P) was translated significantly

21

in the first, upward direction, and the secondary image (S) now occupies the bottom portion of

22

the display.
(h)

23
24

77.

Starting at the first

A second portion of the electronic document is then displayed.
This is

Element 7

Element 7 of claim 19 recites "instructions for displaying an area beyond an edge

25

of the electronic document and displaying a third portion of the electronic document, wherein the

26

third portion is smaller than the first portion, in response to the edge of the electronic document

27
28

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Case No. 11-cv-01846-LHK
-20DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

80.

Element 8 of claim 19 recites "instructions for translating the electronic document

2

in a second direction until the area beyond the edge of the electronic document is no longer

3

displayed to display a fourth portion of the electronic document, wherein the fourth portion is

4

different from the first portion, in response to detecting that the object is no longer on or near the

5

touch screen display."

6

81.

The DiamondTouch system running Tablecloth/DTFlash discloses that if the user

7

lifts his finger after having translated the electronic document beyond the edge, the interface will

8

automatically snap back "elastically" to realign the electronic document with the window’s

9

content area.

As a result, the area beyond the edge of the electronic document is no longer

10

displayed. This snap-back feature is fatalistic such that if a user scrolls past the edge of the

11

electronic document, the screen will always snap back when the user lifts her finger. This snap-

12

back feature will cause the electronic document to be translated in a second direction, which will

13

be opposite to the first direction, until the original primary image is displayed.

14

the edge of the electronic document can no longer be seen. As a result, a fourth portion of the

15

document is displayed. The fourth portion is different from the first portion.

The area beyond

16
17
18
19
20
21
22
23
24
25
26
27
28

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Case No. 11-cv-01846-LHK
-22DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

82.

As shown in this example above and described in further detail in the claim chart

2

attached as Exhibit 3, each element of claim 19 is found in the Tablecloth/DTFlash reference.

3

Tablecloth/DTFlash discloses an electronic document – the combination of primary image and

4

secondary image.

5

Finally, Tablecloth/DTFlash discloses the snap-back translation such that the area beyond the

6

edge is no longer displayed.

7

C.

8
9

It also discloses an area beyond the electronic document – the white space.

Representative Example #2 (electronic document consists of primary image)

83.

Exhibit 4 to my report identifies in detail how each limitation of the '381 patent is

met by Tablecloth/DTFlash.

To place this chart in perspective, below are images showing the

10

key elements of the snap-back behavior in the case where the electronic document is the primary

11

image.

12

on the larger table (blue background on the bottom of each screenshot). The first screenshot

13

shows the primary image (marked P) that has been scrolled down to show a strip (the green grass)

14

of the secondary image (marked S) above the top edge of the primary image.

15

screenshot shows the finger scrolling the primary image (P) upwards (the first direction) so it

16

scrolls off the top.

17

upward in the first direction, past an area beyond the bottom edge of the electronic document and

18

a strip from secondary image (S) forms the area beyond the edge.

19

user then lifts her finger, causing the document to snap back. This action meets the key

20

limitations of the '381 patent which broadly require: (1) a first portion of the electronic document;

21

(2) a second portion in response to moving an object near the screen, (e.g. finger scrolling

22

upward); (3) a third portion and an area beyond the edge of the electronic document in response

23

to the edge being reached; and (4) a fourth portion with the area beyond the edge of the document

24

no longer displayed.

The first screenshot shows the application window with its light gray border (chrome)

The second

In the third screenshot the user continues to scroll the electronic document

In the fourth screenshot, the

25
26
27
28

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Case No. 11-cv-01846-LHK
-23DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1
2
3
4
5
6
7
8
9

84.

10

In this section, I analyze the electronic document as the primary image.
(j)

Preamble

11

85.

The preamble states "A device, comprising."

12

86.

To the extent the preamble is a limitation, the Tablecloth/DTFlash application runs

13

on a device, the DiamondTouch system.

14

(k)

Element 1

15

87.

Element 1 of claim 19 recites "a touch screen display."

16

88.

The DiamondTouch table is a touch-screen display.

The DiamondTouch system

17

is designed so that a display is generated on the DiamondTouch table using a projector.

18

DiamondTouch table is touch-sensitive, such that touches and gestures on the table have a

19

corresponding effect on the display.

20

89.

The

In his Rebuttal Report, Dr. Balakrishnan argued that a touch-sensitive table with

21

an image displayed using a projector could not be a touch screen display. (Balakrishnan

22

Rebuttal Report at ¶¶115-122.)

23

Balakrishnan offered no basis for construing the term "touch screen display" more narrowly to

24

exclude a projector-based display, let alone providing a criterion for what is and what isn’t a

25

touch screen display in his opinion.

26
27
28

02198.51855/4749987 2

90.

However, he offered no explanation for this assertion.

Dr.

To the extent that this element is not anticipated by the Tablecloth/DTFlash

system, it would have been obvious to combine the Tablecloth/DTFlash system with a display
Case No. 11-cv-01846-LHK
-24DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

device. A person of ordinary skill in the art would have understood that the display on the table

2

could be generated by a variety of different methods other than a projector, such as by using an

3

LCD display.

4

(l)

Element 2

5

91.

Element 2 of claim 19 recites "one or more processors."

6

92.

The DiamondTouch system includes a processor in order to execute the source

7

code for Tablecloth/DTFlash.

8

otherwise.

9

(m)

The source code for Tablecloth/DTFlash could not be executed

Element 3

10

93.

Element 3 of claim 19 recites "memory."

11

94.

The DiamondTouch table includes the computer’s memory.

12

Tablecloth/DTFlash could not be stored otherwise.

13
14

The source code for

(n)
95.

Element 4

Element 4 of claim 19 recites "one or more programs, wherein the one or more

15

programs are stored in the memory and configured to be executed by the one or more processors,

16

the programs including."

17

96.

The DiamondTouch system includes programs for Tablecloth/DTFlash stored in

18

the memory and configured to be executed by one or more processors.

19

could not function otherwise.

20

Tablecloth/DTFlash stored in the memory and configured to be executed by one or more

21

processors.

22
23
24

(o)
97.

Tablecloth/DTFlash

I have confirmed with Clifton Forlines that there are programs for

Element 5

Element 5 of claim 19 recites "instructions for displaying a first portion of an

electronic document."

25
26
27
28

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Case No. 11-cv-01846-LHK
-25DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15

98.

In this example, the electronic document consists of a primary image.

Under this

example, the electronic document is shown in the screen capture above, outlined in black.

Thus,

the secondary image is a separate electronic document.

16
17
18
19
20
21
22
23
24
25
26
27
28

02198.51855/4749987 2

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-26DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

99.

Translating the electronic document downward causes a first portion of the

2

electronic document to be displayed.

3

in black. A portion of the secondary image (a separate electronic document) is depicted above

4

the first portion.

5

(p)

6

100.

The first portion is depicted in the picture above, outlined

Element 6

Element 6 of claim 19 recites "instructions for detecting a movement of an object

7

on or near the touch screen display; instructions for translating the electronic document displayed

8

on the touch screen display in a first direction to display a second portion of the electronic

9

document, wherein the second portion is different from the first portion, in response to detecting

10

the movement."

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
02198.51855/4749987 2

101.

DiamondTouch will detect movement of a finger on the touch screen and translate

the electronic document in the direction of the movement of the finger.

Starting at the first

portion referenced above, obtained by having previously scrolled the electronic document
downward, continuing from this position, if the user moves his finger upward, the electronic
document will move upward.

A second portion of the electronic document is then displayed.
Case No. 11-cv-01846-LHK
-27-

DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

This second portion of the document is different from the first portion of the document.

2

depicted in the figure above, which shows that the primary image (P) was translated significantly

3

in the first, upward direction, and the secondary image is no longer visible.

4
5

(q)
102.

This is

Element 7

Element 7 of claim 19 recites "instructions for displaying an area beyond an edge

6

of the electronic document and displaying a third portion of the electronic document, wherein the

7

third portion is smaller than the first portion, in response to the edge of the electronic document

8

being reached while translating the electronic document in the first direction while the object is

9

still detected on or near the touch screen display."

10

103.

The DiamondTouch table running Tablecloth/DTFlash discloses that in response

11

to an edge of the electronic document being reached while translating the electronic document in

12

the first direction while the object (e.g. finger) is still detected on or near the touch screen,

13

displaying an area beyond the edge of the document (white space), and displaying a third portion

14

of the electronic document, wherein the third portion is smaller than the first portion.

15
16
17
18
19
20
21
22
23
24
25
26
27
28

02198.51855/4749987 2

104.

As the user reaches the bottom edge of the electronic document (the bottom edge

Case No. 11-cv-01846-LHK
-28DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

of the primary image) while scrolling upward in the example discussed above, an area beyond the

2

bottom edge of the electronic document is displayed. That area consists of a top portion of the

3

secondary image, which is not part of the electronic document. A third portion of the electronic

4

document is displayed that is smaller than the first portion of the electronic document because the

5

electronic document occupies only a portion of the display. The third portion (outlined in black)

6

and the area beyond the edge (outlined in yellow) of the electronic document are displayed in the

7

picture above.

8
9

(r)
105.

Element 8

Element 8 of claim 19 recites "instructions for translating the electronic document

10

in a second direction until the area beyond the edge of the electronic document is no longer

11

displayed to display a fourth portion of the electronic document, wherein the fourth portion is

12

different from the first portion, in response to detecting that the object is no longer on or near the

13

touch screen display."

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

02198.51855/4749987 2

106.

The DiamondTouch table running Tablecloth/DTFlash discloses that if the user

lifts his finger after having translated the electronic document beyond the edge, the interface will
Case No. 11-cv-01846-LHK
-29DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

automatically snap back to realign the electronic document with the display.

2

area beyond the edge of the electronic document is no longer displayed. This snap-back feature

3

is fatalistic such that if a user scrolls past the edge of the electronic document, the screen will

4

always snap back when the user lifts her finger. This snap-back feature will cause the electronic

5

document to be translated in a second direction, which will be opposite to the first direction, until

6

the original starting image is displayed.

7

can no longer be seen. As a result, a fourth portion of the document is displayed.

8

portion is different from the first portion.

9

107.

As a result, the

The area beyond the edge of the electronic document
The fourth

As shown in the example above and described in further detail in the claim chart

10

attached as Exhibit 4, each element of claim 19 is found in the Tablecloth/DTFlash reference.

11

Tablecloth/DTFlash discloses an electronic document, the primary image.

12

area beyond the electronic document, a second electronic document.

13

Tablecloth/DTFlash discloses the snap-back translation such that the area beyond the edge is no

14

longer displayed.

15

108.

It also discloses an

Finally,

Because each limitation is found in the Tablecloth/DTFlash reference, in my

16

opinion claim 19 of the '381 is invalid due to anticipation.

17

found in Tablecloth/DTFlash, in my opinion claim 19 of the '381 patent would be found invalid

18

for obviousness.

19 VII.

OTHER COMMENTS

20

A.

To the extent any limitation is not

DiamondTouch Calibration

21

109.

22

calibration."

23

above the table, the projected image would exceed the dimensions of the table.

24

suspended too close to the table, the projected image would be smaller than the dimensions of the

25

table, leaving an empty border region around the projected image." (Balakrishnan Rebuttal

26

Report at ¶ 110). However, Dr. Balakrishnan did not explain why any difficulty in setting up

27

the projector would affect the invalidity analysis. In fact, the DiamondTouch system is easy to

28

02198.51855/4749987 2

Dr. Balakrishnan states that the DiamondTouch system requires "precise
For example, Dr. Balakrishnan notes, "If the projector were suspended too far
If it were

Case No. 11-cv-01846-LHK
-30DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381

1

set up and trivial to calibrate.

2

of the projected image, the DiamondTouch system running Tablecloth/DTFlash operates

3

precisely as described in this declaration.

4

110.

Once calibrated, which requires four finger touches on the corners

Dr. Balakrishnan also appears to be concerned that the DiamondTouch system was

5

not being used as intended in order to take the videos and photographs attached to the Expert

6

Report of Andries van Dam, Ph.D. Regarding Invalidity of U.S. Patent No. 7,469,381. Below is

7

a picture of the DiamondTouch table, projector, and a computer, here the ThinkPad laptop,

8

driving the display.

9

properly and is behaving in its intended manner.

As the photograph indicates, the DiamondTouch system was calibrated

10
11
12
13
14
15
16
17
18
19
20
21
22

I declare under penalty of perjury that the foregoing is true and correct. Executed in

23 Providence, Rhode Island on May 17, 2012.
24
25
26
27
28

02198.51855/4749987 2

By
Andries van Dam

Case No. 11-cv-01846-LHK
-31DECLARATION OF ANDRIES VAN DAM, PH.D. IN SUPPORT OF SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT REGARDING THE INVALIDITY OF U.S. PATENT NO. 7,469,381