`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`RICOH AMERICAS CORPORATION & XEROX CORPORATION,
`Petitioner
`
`v.
`
`MPHJ TECHNOLOGY INVESTMENTS, LLC
`Patent owner
`
`________________
`
`
`CASE NO. IPR2013-00302
`Patent 7,986,426 B1
`
`________________
`
`
`Declaration of Glenn E. Weadock
`in Support of Patent Owner Response
`
`
`
`
`
`
`MPHJ 2002
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I. Background and Qualifications .............................................................................. 1
`A. Scope of Work ............................................................................................. 1
`B. Expertise ...................................................................................................... 1
`II. Claim Construction ................................................................................................... 4
`A. Definition of a Person of Ordinary Skill in the Art .................................... 4
`B. “At least one,” “at least one of,” and related phrases................................. 4
`C. “Applications” ............................................................................................. 4
`D. “Managing” ................................................................................................. 6
`E. “Seamlessly” ............................................................................................... 6
`F. “Module” ..................................................................................................... 6
`G. “GO Operation” .......................................................................................... 8
`H. Means-plus-function limitations ............................................................... 8
`I.
`“Dynamically combining” .......................................................................... 9
`J. “Integration...into a destination application” ............................................ 9
`K. “External devices and applications” .......................................................... 9
`L. Melen Declaration ..................................................................................... 10
`III. Opinions Regarding Validity of the ’426 Patent ................................................. 11
`A. Legal Basis for Opinion ............................................................................. 11
`B. Opinions on Invalidity Generally .............................................................. 15
`C. Specific Opinions Regarding Salgado ....................................................... 18
`D. Specific Opinions Regarding XNS ........................................................... 23
`IV. Proposed Claim Amendment ................................................................................ 29
`A. Substitute Claim 12 is supported by the original application that issued as
`the ‘426 patent ................................................................................................ 30
`B. Substitute Claim 12 is patentable over the cited references and other
`references ........................................................................................................ 34
`Appendix A. References and Information Considered ............................................. 41
`Appendix B. Curriculum Vitae ..................................................................................... 42
`
`
`
`
`i
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`Background and Qualifications
`A.
`Scope of Work
`
`I.
`
`
`
`1.
`I have been asked by counsel for MPHJ Technology Investments,
`LLC (“MPHJ”) to analyze U.S. Patent No. 7,986,426 (the “’426 patent”), issued to
`inventor Laurence C. Klein, and submit this Declaration in Support of Patent
`Owner’s Response in this IPR.
`2.
`The opinions provided are my own and are based on my analysis
`and work in this case and the education, experience, and skills I have acquired
`and developed throughout my career. Appendix B contains my Curriculum Vitae.
`3.
`In reaching my conclusions and opinions, I have relied upon my
`experience and training, my testing, and my review of the documents produced in
`this proceeding, and I have considered the documents and materials described in
`Appendix A in the process of forming my opinions.
`4.
`For the time I expend on this case, my company is currently being
`compensated at a rate of $475.00/hour less Teklicon’s broker fee. My
`compensation is not in any way dependent on the outcome of the dispute.
`
`B.
`
`Expertise
`
`
`
`5.
`Details of my professional qualifications and background are set out
`in my curriculum vitae (Appendix B).
`6.
`I received a B.S. “with distinction” in General Engineering from
`Stanford University in 1980. In connection with that degree, I took several classes
`in computer science.
`7.
`I am currently the President and sole employee of Independent
`Software, Inc. (“ISI”), based in Lakewood, Colorado. ISI is an information
`technology consulting firm active since 1982; I have worked full-time at ISI since
`1988. ISI has provided a wide variety of services, including technical education,
`systems integration, network maintenance, Web site design, database design and
`programming, performance analysis, and multimedia services. ISI’s clients have
`
`1
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`included many of the country’s largest corporations and government agencies. In
`recent years, my focus has been on teaching technical seminars through Global
`Knowledge, and providing consulting in patent cases.
`8.
`I have several years’ experience creating software. I wrote data
`acquisition and billing analysis software in the 1981-1985 time period; a royalty
`calculating and reporting program for an oil and gas company in 1984-1986;
`database software for a travel magazine and for a credit collection bureau (1987-
`89). In the 2003-2008 timeframe, I co-developed a Web-based program to
`provide investor education (“MarketCoach”), designing a browser-based user
`interface, including menus and windows, with HTML, Flash, and JavaScript. I
`have also designed and deployed several Web sites for my own companies as well
`as for clients of ISI.
`9.
`My experience in designing and installing networks for office
`automation extends from 1981 to the present day. I have planned and managed
`such projects on minicomputers, Novell networks, Macintosh networks, and
`Microsoft Windows networks.
`10.
`I have written several books dealing with Windows, networking,
`and Web environments, including Bulletproof Your PC Network (1995),
`Bulletproofing NetWare (1996), Intranet Publishing For Dummies (1997),
`Bulletproofing Windows 95 (1997), Bulletproofing Client/Server Systems (1997),
`Bulletproofing Windows 98 (1998), Windows 95 Registry For Dummies (1998),
`Windows 98 Registry For Dummies (1998), Small Business Networking For
`Dummies (1998), MCSE Windows 98 For Dummies (1999), Windows 2000
`Registry For Dummies (2000), Look & Learn Dreamweaver 4 (2001), MCSE
`Windows 2000 Professional (2000), MCSE Windows 2000 Network
`Infrastructure For Dummies (2000), MCSE Windows XP Professional For
`Dummies (2001), and (as contributing author) Using Macromedia Studio MX
`2004 (2003).
`11.
`I have written and delivered a large number of technical seminars
`on Windows, starting with Windows 3.0 in 1990 (through Data-Tech Institute)
`up through today’s Windows 8 (through Global Knowledge, the world’s largest
`independent provider of Microsoft training). I have written 26 technical seminars
`
`2
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`in the IT field since 1988, and I have taught over 300 intensive technical courses.
`Many of these courses have dealt specifically with configuring, tailoring, and
`optimizing the subject operating systems. I continue to teach both instructor-led
`and Internet-based classes on a contract basis. I have also co-authored Microsoft
`Official Curricula (MOC) classes offered by Microsoft to its customers. I have
`taught seminars on Web design for Lucent Technologies and Avaya
`Communications.
`12.
`I was involved as writer, editor, and/or presenter with a variety of
`networking- and Internet-related professional video courses developed and
`marketed by Technology Interchange Group, including Windows on NetWare
`(1994), Enabling Networks for Internet Access (1995), Windows 95 Advanced
`(1995), and Troubleshooting & Fine-Tuning the Networked PC (1995).
`13.
`I am not an attorney, but I have experience with the patent system,
`both as a consultant and expert witness in patent cases, and as an inventor. I
`hold two US patents.
`I have considered the ʼ426 patent for the purposes of providing my
`14.
`expert opinion regarding the meaning of certain claim terms and the validity of
`certain claims of the patent in view of certain prior art. The ʼ426 patent generally
`relates to a “Virtual Copier” system involving the management of physical and
`electronic documents across multiple devices and applications in a computer
`network. Because of my background, training, and experience, I am qualified as
`an expert in the technical areas relevant to the ʼ426 patent.
`
`
`
`3
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`II. Claim Construction
`Definition of a Person of Ordinary Skill in the Art
`A.
`
`
`
`15. When interpreting the claim terms of the ’426 patent, I have
`attempted to interpret the claims from the perspective of a person having an
`ordinary level of skill in the field of high-level software application development
`in networked environments. In my opinion, a person of ordinary skill in the art
`at the time of the effective filing date would have had at least a Bachelor of
`Science degree in computer science or software engineering or a Bachelor of
`Science degree in a technical field requiring computer science or software
`engineering courses, as well as two to four years of experience designing, writing,
`or implementing software products, such experience to include printing,
`networking, scanning, and e-mail. In addition, more experience can offset less
`education. I am an individual of at least ordinary skill in the art of the ʼ426
`patent, according to my definition and also according to Dr. Melen’s definition
`(Melen, ¶18).
`16.
`I disagree with Dr. Melen’s characterization of a person of ordinary
`skill in the art as someone having only a B.S. degree “without experience in the
`field.” A person of ordinary skill in the art of the ’426, which involves software
`performing the complex task of integrating scan, fax, print, and e-mail
`functionality in a network environment, would (in my opinion) need practical
`experience with these technologies, as well as some experience writing software.
`
`B.
`
` “At least one,” “at least one of,” and related phrases
`
`
`
`17.
`For purposes of the IPR and the broadest reasonable construction
`test, I do not take issue with the Board’s construction (Decision, 10-14) that “at
`least one of A and B” and “at least A and B” means “in the alternative,” i.e. “one or
`more A or B.”
`
`C.
`
`“Applications”
`
`
`
`4
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`18.
`The term “software” in the abstract need not refer only to software
`that executes on a general-purpose computer such as a PC, but can also refer to
`software that is embedded in a device, such as, for example, the firmware
`resident on a controller circuit in a scanner or printer.
`19.
`The term “application,” however, is in my experience typically used
`in reference to software that executes on a general-purpose computer such as a
`PC, and furthermore, software that is separate and distinct from the operating
`system of such a computer.
`20.
`The Board recognizes that a software application is “a program that
`may or may not be on a device.” “Business applications” identified by the Board
`from the specification (Microsoft Office, Microsoft Exchange) are designed by the
`same company and work together (e.g. to implement e-mail systems), yet they
`are each discrete programs, i.e., applications.
`21.
`I therefore respectfully disagree with the Board when it interprets
`the terms “third-party software application” or “application” to mean “a program
`that may or may not be stored on a device.” I believe that such an interpretation
`is overly broad and reads out the meaning of “application” as a person of ordinary
`skill in the art would understand it, i.e. as distinct from firmware or operating
`system software.
`22.
`I would define “application” in the context of the patent using its
`ordinary and customary meaning in the art, based on my experience in the IT
`industry, i.e., as “a discrete software program executable on an operating system
`for the purpose of accomplishing a task, e.g., word processing, spreadsheet, and
`database management.”
`23.
`This definition is consistent with my 1994 description of
`“application software” on p. 43 of Exploding the Computer Myth1: “In contrast to
`system software, programs that enable users to do specific and useful tasks with
`the computer, such as word processing and inventory management, are
`application software.” It is also consistent with Newton’s Telecom Dictionary2,
`
`
`1 Exploding the Computer Myth: Discovering the 13 Realities of High Performing Business Systems,
`Glenn E. Weadock, Oliver Wight Publications, Inc., 1994
`2 Newton’s Telecom Dictionary, p. 44, Harry Newton, Flatiron Publishing, 1996
`5
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`which defines “Application” as “A software program that carries out some useful
`task. Database managers, spreadsheets, communications packages, graphics
`programs and word processors are all applications.”
`24.
`Furthermore, I would define “third-party software” as commercially
`available software made by someone other than the creator of the computer data
`management system. This avoids the problem of the Board’s definition, which
`merely defines a software application without regard for the term “third party.”
`
`D.
`
`“Managing”
`
`
`
`25.
`For purposes of the IPR and the broadest reasonable construction
`test, I do not take issue with the Board’s construction of “managing” as “sending
`or employing signals to facilitate receiving or transmitting data, or transforming
`data, or both.”
`
`E.
`
`“Seamlessly”
`
`
`
`26.
`For purposes of the IPR and the broadest reasonable construction
`test, I do not take issue with the Board’s adopting Dr. Melen’s interpretation of
`“seamlessly” as “with a low amount of effort.”
`
`F.
`
` “Module”
`
`
`
`27.
`The Board has interpreted “module” as “a logically separable part of
`the recited software application, and may include another module and may
`overlap with another module in functionality.” (Decision, 18) I find this
`interpretation to be overly broad, and point out that “module” refers to a
`component of the claimed software application of the data management system.I
`also do not find support in the cited definitions, or in the ‘426 specification, for
`the clause after the “and,” that is, “may include another module and may overlap
`with another module in functionality.” In fact, the ‘426 specification does not
`disclose one module that includes another, or that overlaps with another. The fact
`that some of the modules of the ‘426 have counterparts in prior art copier or
`
`6
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`scanner systems does not in itself justify the statement that “modules may
`include other modules and may overlap in functionality” (Decision, 16).
`28. Other aspects of “module” are, however, important in the context of
`the ‘426, in particular the adherence to a common API for the Virtual Copier
`functionality, permitting the modules to interact effectively and also allowing for
`the development of new modules for new input and output devices, and for new
`processes. The Board cites relevant parts of the patent on p. 12, particularly the
`language that “As long as the input and output module conform to the API
`specified in this document it will plug-and-play with VC. VC will be able to mix
`and match the custom Input and Output Module with its standard and other
`custom Input and Output Modules.”
`29.
`The Board has indicated that it appreciates the architectural aspects
`of the ‘426 in its discussion of the “five essential modules” (Decision, 3-4),
`namely, input, output, process, client, and server. The fact that these modules can
`communicate with each other is at the center of the ‘426 invention. Also, the
`Board recognizes that modules are part of a larger computer program.
`Furthermore, the modules are understood to be part of a software application in
`the specification, as well as Claim 1 and its dependents.
`30.
`I note that “software modules” are not inherent in all software;
`software can be designed in a modular fashion or in a monolithic fashion. For
`example, the Developer’s Guide to Microsoft Prism3 notes that “A modular
`application is an application that is divided into a set of functional units (named
`modules) that can be integrated into a larger application... Modules are
`independent of one another but can communicate with each other in a loosely
`coupled fashion.” The same document goes on to note that “...unless great care is
`taken, your application design may still be ‘monolithic’ (where all the
`functionality is implemented in a tightly coupled way within the application),
`which can make the application difficult to develop, test, extend, and maintain.”
`31.
`Considering the above, I would respectfully suggest that a more
`appropriate interpretation of “module” in the context of the ‘426 is “a logically
`
`3 Prism 4.1: Developer’s Guide to Microsoft Prism, February 2012, available at
`http://msdn.microsoft.com/en-us/library/gg405479(v=pandp.40).aspx
`7
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`separable part of the claimed data management system’s software that can
`function in a plug-and-play manner with the Virtual Copier.”
`
`G.
`
` “GO Operation”
`
`
`
`32.
`For purposes of the IPR and the broadest reasonable construction
`test, I do not take issue with the Board’s adopting Dr. Melen’s interpretation of
`“Go operation” as “an operation that begins a process” but respectfully suggest
`that this interpretation does not go far enough, and reads out some of the
`intended meaning. It is possible to perform an operation that begins a process
`that requires dozens of additional operations, and this is not the intent of the ‘426
`as I read it. Dr. Melen points out that the ‘426 patent uses the language “press a
`GO button to actually carry out the photocopy process” (¶28) and, in plain and
`ordinary language, “carry out” is not the same as simply “begin.” To “carry out” a
`process conveys the concept of completion. Therefore I suggest that a “Go
`operation” in the context of the ‘426 should be interpreted as “an operation that
`begins a process and requires no further action from the user to complete.”
`
`H. Means-plus-function limitations
`
`
`
`33.
` With respect to the four means-plus-function limitations (see
`Decision, 19 ff.), each of the four is disclosed together in the ’426 at 73:15-26 as
`part of the “Server Module API.” The “VC Methods” interface provide the initiate,
`cancel, and reset functions in the first limitation of Claim 6; the “Modules Object”
`maintains the list of available modules, in the second limitation; the “Program
`Object” maintains the list of currently active modules, in the third limitation; and
`the “VDocument Object” maintains document information, in the fourth
`limitation. Claim 10 discloses very similar means-plus-function limitations, as
`noted by the Board (Decision, 20).
`34. Given that all four of the above interfaces are described in the
`specification as being part of the Server Module API, the corresponding structure
`is the memory for storing the Server Module code and the processor that executes
`the Server Module code. The patent indicates that “The VC software can reside on
`
`8
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`a PC, LAN/WAN server, digital device (such as a digital copier), or on a web
`server to be accessed over the Internet” (5:60-62), therefore the memory and
`processor structures will vary accordingly, depending on where the VC software
`resides in any specific embodiment.
`
`I.
`
`“Dynamically combining”
`
`
`
`35.
`Although the Board did not construe this term, I believe it would be
`helpful to do so, and I would define “dynamically combining” in the context of the
`patent as “routing an input to an output on the fly, responsive to receiving an
`input instruction.” The term “dynamically” suggests the meaning of “on the fly”
`as opposed to predetermined or static. The term “combining” is used in the
`patent to suggest “routing an input to an output,” for example in 8:53-59: “A
`virtual copier can be created with VC by combining a scanner with a printer; or
`by combining a scanner with an application; or by combining an application with
`an image printer.” In each of these cases, an input is routed to an output.
`
`J.
`
`“Integration...into a destination application”
`
`
`
`36. Although the Board did not construe this term, I believe it would be
`helpful to do so, and I would define “integration of one or more of said electronic
`image, electronic graphics and electronic document into a destination
`application” in the context of the patent as “importing one or more of said
`electronic image, electronic graphics and electronic document into a software
`program.”
`
`K.
`
`“External devices and applications”
`
`
`
`37.
`Although the Board did not construe this term, I believe it would be
`helpful to do so, and I would define “external devices and applications” in the
`context of the patent as “devices and software applications that are remotely
`located or remotely executed.”
`
`
`9
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`L.
`
`Melen Declaration
`
`
`
`38.
`I disagree with certain parts of Dr. Melen’s characterization of the
`‘426 patent in his declaration of 5/22/13.
`39.
`In ¶25, Dr. Melen states that “a large portion of the disclosure of the
`‘’426 patent is devoted to describing ‘middleware’ that is allegedly capable of
`creating a ‘component factory’” and then he states that “The claims do not relate
`to this technical disclosure.” I disagree. Certain of the claims discuss various
`software “modules” and the concept of modules is a key part of the “middleware”
`concept of the ‘426 patent.
`40.
`I also disagree with Dr. Melen when he states in ¶26 that
`“seamlessly” is “used as a ‘buzz word’ more appropriate for a marketing campaign
`than a technical disclosure.” A person of ordinary skill in the art would, in my
`opinion, understand the concept of seamless integration in a technical sense, and
`the patent itself provides clues as to what this term means (e.g. without having to
`modify the target application, by performing a single step, etc.).
`41. Other areas in which I vary from Dr. Melen’s interpretations are set
`forth in my opinions on validity, later in this report.
`
`
`10
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`III. Opinions Regarding Validity of the ’426 Patent
`A.
`Legal Basis for Opinion
`
`
`
`42.
` I understand that the claims under review in the IPR are claims 1-
`11 of the ʼ426 patent (collectively “the claims under review”). I also understand
`that the parties proposed certain terms for construction and that the Board’s
`Decision construed these terms.
`43.
`It is my understanding that, in an inter partes review, claim terms
`are interpreted according to their broadest reasonable construction in light of the
`specification of the patent. It is also my understanding that under a broadest
`reasonable interpretation, words of the claim must be given their plain meaning,
`unless such meaning is inconsistent with the specification, such as where the
`inventor acted as his or her own lexicographer, used terms without an established
`plain and ordinary meaning in the art, or redefined a well-known term of art. It is
`the use of the words in the context of the written description and customarily by
`those skilled in the relevant art that accurately reflects both the ‘ordinary’ and the
`‘customary’ meaning of the terms in the claims. I understand that the plain
`meaning to one of skill in the art is considered at the time of the invention.
`44.
`I further understand that, if there is no plain and ordinary meaning
`of a claim term, then the construction of the claim term should be derived from
`the specification. I also understand that the specification plays a crucial role in
`claim construction, and that the claims must be read in view of the specification
`of which they are a part. I also understand that the specification may reveal a
`special definition given to a claim term by the patentee that differs from the
`meaning it would otherwise possess, and that in such cases the lexicography
`governs. I further understand that the prosecution history of the patent should
`also be considered, and that it provides evidence of how the U.S. Patent and
`Trademark Office and the inventor understood the patent.
`I understand that claims 1-5 and 9-11 of the ʼ426 patent are
`45.
`independent claims. These claims are read separately to determine their scope.
`Claims 6-8, however, are dependent claims. A dependent claim can be based on
`
`11
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`the elements of an independent claim and one or more dependent claims, and to
`determine its scope, it must be read together with the claim(s) from which it
`depends.
`46.
`I have been informed that, in the context of the inter partes review,
`the party asserting invalidity of a patent must prove invalidity by a
`preponderance of the evidence. I have been informed that a “preponderance of
`the evidence” is evidence sufficient to show that a fact is more likely than not.
`
`
`1. Anticipation
`
`
`
`47.
`I understand that a patent claim is invalid for lack of novelty, or as
`“anticipated,” under 35 U.S.C. section 102, if, among other things, (a) the alleged
`invention was known or used by others in this country, or patented or described
`in a printed publication in the United States or a foreign country, before the
`alleged invention thereof by the patent's applicant(s), or (b) the alleged invention
`was patented or described in a printed publication in this or a foreign country or
`in public use or on sale in this country, more than one year prior to the date of the
`application for patent in the United States, or (e) the alleged invention was
`described in an application for patent by another person in the United States
`before the alleged invention by the applicant thereof.
`48.
`I understand that references or items that fall into one or more of
`these categories are called “prior art,” and that in order to anticipate a patent
`claim pursuant to 35 U.S.C. section 102, a reference must contain all of the
`elements and limitations described in the claim either expressly or inherently. As
`such, I understand that in deciding whether or not a single item of prior art
`anticipates a patent claim, one should consider what is expressly stated or
`present in the item of prior art, and what is inherently present.
`49.
`I understand that, to establish inherency, the missing characteristic
`must be necessarily present in the single reference, and that it would be so
`recognized by persons of ordinary skill in the art. I also understand that the
`missing descriptive material cannot merely be probably or possibly present. It is
`my understanding that one of ordinary skill in the art may not have recognized
`
`12
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`the inherent characteristics or functioning of the prior art at the time. I further
`understand that obviousness is not inherent anticipation, and that it is
`insufficient that a missing limitation is so similar to a limitation actually
`disclosed in the reference that one of ordinary skill in the art would see the
`substitution as obvious. I also understand that, if it is necessary to reach beyond a
`single reference to provide missing disclosure of the claimed invention, the
`proper ground is not anticipation, but obviousness.
`50.
`I understand that invalidity based on anticipation requires that the
`reference enable the subject matter of the reference and therefore the patented
`invention without undue experimentation. I also understand that the proper test
`of a publication as prior art is whether one skilled in the art to which the
`invention pertains could take the description in the printed publication and
`combine it with his or her own knowledge of the particular art and from this
`combination be put in possession of the invention.
`
`
`2. Obviousness
`
`
`
`51.
`I understand that a patent claim is invalid because it lacks novelty
`or is “obvious” under 35 U.S.C. § 103 if the claimed subject matter would have
`been obvious to a person of ordinary skill in the art at the time the application for
`patent was filed, based upon one or more prior art references. I understand that
`an obviousness analysis should take into account (1) the scope and content of the
`prior art; (2) the differences between the claims and the prior art; (3) the level of
`ordinary skill in the pertinent art; and (4) secondary considerations, if any, of
`obviousness (such as unexpected results, commercial success, long-felt but
`unsolved needs, failure of others, copy by others, licensing, and skepticism of
`experts).
`52.
`I understand that a conclusion of obviousness may be based upon a
`combination of prior art references. However, I also understand that a patent
`composed of several elements may not be proved obvious merely by
`demonstrating that each of its elements was independently known in the art. I
`further understand that there must be an appropriate articulation of a reason to
`
`13
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`combine the elements from the prior art in the manner claimed, and obviousness
`cannot be based on a hindsight combination of components selected from the
`prior art using the patent claims as a roadmap.
`53.
`I understand that the following exemplary rationales may lead to a
`conclusion of obviousness: the combination of prior art elements according to
`known methods to yield predictable results; the substitution of one known
`element for another to obtain predictable results; the use of known techniques to
`improve similar devices in the same way; and some teaching, suggestion, or
`motivation in the prior art that would have led one of ordinary skill to modify the
`prior art reference teachings to arrive at the claimed invention. However, a claim
`is not obvious if the improvement is more than the predictable use of prior art
`elements according to their established functions. Similarly, a claim is not
`obvious if the application of a known technique is beyond the level of ordinary
`skill in the art. Furthermore, when the prior art teaches away from combining
`certain known elements, discovery of a successful means of combining them is
`not obvious.
`54.
`I further understand that, to determine obviousness, the courts look
`to the interrelated teachings of multiple patents, the effects of demands known to
`the design community or present in the marketplace, and the background
`knowledge possessed by a person having ordinary skill in the art.
`55.
`I understand that a prior art reference must be considered in its
`entirety, i.e., as a whole, including portions that would lead away from the
`claimed invention. I also understand that if the proposed modification or
`combination of the prior art would change the principle of operation of the prior
`art invention being modified, then the teachings of the references are not
`sufficient to render a claim prima facie obvious. I further understand that, when
`considering a disclosure or reference, it is proper to take into account not only
`specific teachings of the reference but also the inferences which one skilled in the
`art would reasonable be expected to draw therefrom.
`56.
`I understand that, to establish prima facie obviousness of a claimed
`invention, all the claim limitations must be taught or suggested by the prior art.
`
`
`14
`
`
`

`

`Expert Declaration of Glenn Weadock, 2/28/14
`
`
`
`
`
`B.
`
`Opinions on Inv