UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK, INC., LINKED IN CORP., AND TWITTER, INC.,
`Petitioners
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC
`Patent Owner
`
`Case IPR20 13-00481
`Patent 6,233,571
`
`DECLARATION OF PAUL JACOBS
`in Support of Patent Owner Response
`
`EXHIBIT 2113
`Facebook, Inc. et al.
`v.
`Software Rights Archive, UC
`CASE IPR2013-00481
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.  Qualifications, Background, and Experience ................................................ 1 
`II.  Status as an Independent Expert Witness ...................................................... 3 
`III.  Proceedings to Date ....................................................................................... 4 
`IV.  Materials Reviewed ....................................................................................... 5 
`V.  Summary of Opinions .................................................................................... 7 
`VI.  The Claims of the ’571 Patent ..................................................................... 11 
`VII.  Legal Principles Used in Analysis ........................................................... 15 
`A. A Person of Ordinary Skill in the Art ......................................................... 15 
`B. Claim Construction ...................................................................................... 16 
`C. Prior Art ....................................................................................................... 17 
`D. Patentability ................................................................................................. 17 
`VIII.  A Person of Ordinary Skill in the Relevant Art ....................................... 20 
`IX.  Claim Interpretation .................................................................................... 21 
`A. Proximity Indexing ...................................................................................... 21 
`B. Cluster Analyzing ........................................................................................ 22 
`X.  Opinions on Obviousness ............................................................................ 23 
`A. Essential Claim Features are Entirely Missing from the Art of Record ..... 24 
`1.  The Referenced Art Does Not Teach or Suggest the Claim Steps of
`Claims 12, 21, and 22 Related to Hypertext Links, and Does Not Teach
`or Suggest the Identifying and Analyzing/Determining Steps .................... 24 
`2.  The Referenced Art Fails to Teach or Suggest the Displaying Step
`in Combination with the Other Claim Features ........................................... 40 
`B. The cited art does not teach analyzing hypertext links or URLs for
`indirect relationships ........................................................................................ 42 
`C. It would not have been obvious to analyze hypertext links absent
`impermissible hindsight ................................................................................... 49 
`
`i
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`

`

`D. The “Indirect Relationships” Features of the Referenced Art Would not
`Have Been Used by One of Ordinary Skill in any Obviousness
`Combination ..................................................................................................... 61 
`1.  The Use of Indirect Relationships for Searching Was Not an
`Obvious Technique that Would Yield Predictable Results at the Time of
`the Invention ................................................................................................ 61 
`2.  The Fox Papers Teach That Indirect Relationships Degrade Search
`Results .......................................................................................................... 78 
`E. The Petition Relies on Regression Results, Which Are a Method of Data
`Analysis, Not a Generalizable Search Method ................................................ 92 
`F.  Analysis of Web Based Links Was Not an Obvious Technique that
`Would Yield Predictable Results at the Time of the Invention ..................... 102 
`G. Claim 12 is Non-Obvious Over the Cited Art ........................................... 109 
`1.  The cited art does not disclose or suggest “identifying Universal
`Resource Locators for the web pages” ...................................................... 109 
`2.  The cited art does not disclose or suggest “cluster analyzing the
`Universal Resource Locators for indirect relationships” ........................... 112 
`3.  The cited art does not disclose or suggest “displaying identities of
`web pages ................................................................................................... 118 
`H. Claim 21 is Non-Obvious Over the Cited Art ........................................... 120 
`1.  The cited art does not disclose or suggest “identifying hyperjump
`data” ........................................................................................................... 122 
`2.  The cited art does not disclose or suggest the “determining” step ..... 123 
`I.  Claim 22 is Non-Obvious Over the Cited Art ........................................... 127 
`1.  The cited art does not teach and would not have suggested
`“proximity indexing the identified hyperjump data” as claimed. .............. 128 
`2.  The cited art does not disclose or suggest “displaying one or more
`determined hyperjump data” ...................................................................... 130 
`3.  The cited art does not disclose or suggest “generating a source map
`using one or more of the determined hyperjump data” ............................. 131 
`
`
`
`ii
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`

`

`4.  The cited art does not disclose or suggest “activating a link
`represented on the source map” as claimed ............................................... 131 
`XI.  Conclusion .................................................................................................133 
`
`
`
`
`
`
`
`
`
`iii
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`

`

`I, Paul S. Jacobs, declare as follows:
`
`1. My name is Paul S. Jacobs. I am the Founder and President of Jake
`
`Technologies, Inc. My business address is 27 Logan Circle NW #14, Washington,
`
`DC 20005. I understand that my declaration is being submitted in connection with
`
`the above-referenced inter partes review (IPR).
`
`I.
`
`Qualifications, Background, and Experience
`2.
`
`I received a Bachelor of Science in Applied Mathematics from
`
`Harvard University in 1981, a Master of Science in Applied Mathematics from
`
`Harvard University in 1981, and a Ph.D. in Computer Science from the University
`
`of California at Berkeley in 1985.
`
`3.
`
`I have authored or co-authored over 50 scientific and technical
`
`publications, I am listed as an inventor on two U.S. patents directed to
`
`computational lexicons, and I have over 30 years of experience in the computer
`
`and information retrieval industry.
`
`4.
`
`I have served in numerous professional and scientific capacities,
`
`including one year as a visiting professor of computer science at the University of
`
`Pennsylvania and several years as a member of the executive committee of the
`
`Association for Computational Linguistics. Currently, I serve on the Public Policy
`
`Council of the Association for Computing Machinery (USACM) and the
`
`Intellectual Property Committee of that council. I also serve on the Patent Public
`
`
`
`1
`
`

`

`Advisory Committee (PPAC) appointed by the Secretary of Commerce of the
`
`United States. I am currently a technology consultant and an adjunct lecturer at
`
`the University of Maryland in College Park, where I have taught classes in the
`
`College of Information Studies (The “iSchool”) since 2007.
`
`5.
`
`Between 1985 and 1994, I was employed as a computer scientist with
`
`General Electric (“GE”) Corporate Research and Development. I also consulted
`
`for Infonautics, an early Internet information services and advanced search
`
`company. I was the editor of a book, entitled “Text-Based Intelligent Systems.”
`
`The book was a collection of papers based on a symposium I chaired in 1990,
`
`which brought together leaders of the field of Information Retrieval to address
`
`issues related to large-scale advanced text processing.
`
`6.
`
`I joined a company named SRA International (“SRA”) in the latter
`
`part of 1994 and became director of media information technologies.1 My
`
`responsibilities included new ventures and technology activities related to the
`
`Internet and the World Wide Web. From 1994 until 2002, I held a series of
`
`technology and business management jobs in organizations focused on networked
`
`information management applications. I was CEO of IsoQuest, an SRA
`
`
`1 SRA International has no relationship with Software Rights Archives, owner of
`
`the patent under review.
`
`
`
`2
`
`

`

`subsidiary, managing vice president for electronic commerce at SRA, president
`
`and CTO of AnswerLogic, and CTO of Primus Knowledge Solutions. My
`
`responsibilities during this period included business and technical roles for a range
`
`of products and technologies focused on search-related solutions and on leveraging
`
`information on the Web.
`
`7.
`
`I have consulted with a number of law firms on intellectual property
`
`matters related to computer software. I provided deposition testimony and
`
`submitted declarations and reports in Inxight Software v. Verity (N.D. of Cal., C-
`
`04-5387 CRB and C-05-01660 CRB). I submitted a declaration in Graphon v.
`
`AutoTrader (E.D. Tx., 2:05-CV-530). I submitted declarations and reports and
`
`was deposed in New River, Inc. v. Mobular Technologies, Inc. (D. Mass., Docket
`
`05-CV-12285-RCL). I have served as a consultant on a number of other patent-
`
`related cases.
`
`8.
`
`A more complete recitation of my professional experience including a
`
`list of my journal publications, patents, conference proceedings, book authorship,
`
`and committee membership may be found in my Curriculum Vitae, attached to my
`
`declaration as Appendix A.
`
`II.
`
`Status as an Independent Expert Witness
`9.
`
`I am being compensated for my work in this matter by Software
`
`Rights Archive, LLC, at my current rate of $350 per hour. I have no personal or
`
`
`
`3
`
`

`

`financial stake or interest in the outcome of the above-referenced case or any
`
`related action. My compensation is not dependent upon my testimony or the
`
`outcome of this proceeding.
`
`10.
`
`I have also been engaged by DiNovo, Price, Ellwanger and Hardy,
`
`LLP to assist with the pending litigation involving the same patents, at the same
`
`$350 hourly rate. My compensation is not dependent on my testimony or any
`
`outcome.
`
`III. Proceedings to Date
`11.
`I have been informed that the Patent Trial and Appeal Board (the
`
`Board) has granted a Petition (the “Petition”). by Facebook, Inc., LinkedIn Corp.,
`
`and Twitter, Inc. (“Petitioners”) seeking Inter Partes Review of U.S. Patent No.
`
`6,233,571 (the “‘571 patent”) (Exhibit 1001) by Daniel Egger, filed on May 15,
`
`2001, which is a divisional of U.S. Pat. No. 5,832,494, filed on May 17, 1996,
`
`which is a continuation –in – part of U.S. Pat. No. 5,544,352, filed on June 14, 993,
`
`and titled “Method and Apparatus for Indexing, Searching and Displaying Data.”
`
`It is my understanding that the Board instituted review on the following grounds:
`
`Ground 1 – Obviousness of claims 12, 21, and 22 based on Edward A. Fox,
`
`Extending the Boolean and Vector Space Models of Information Retrieval
`
`with P-Norm Queries and Multiple Concept Types, (Aug.1983) (Ph.D.
`
`dissertation, Cornell Univ. Dept. of Comp. Sci.) (“Fox Thesis”) (Ex. 1012),
`
`
`
`4
`
`

`

`Edward A. Fox, Some Considerations for Implementing the SMART
`
`Information Retrieval System under UNIX, (Sept. 1983) (Ph.D. dissertation,
`
`Cornell Univ. Dept. of Comp. Sci.) (“Fox SMART”) (Ex. 1013), and
`
`Edward A. Fox, Users, user interfaces, and objects: Envision, a digital
`
`library, J. Am. Inf. Sci. vol. 44, issue 8 (September 1993) (“Envision) (Ex.
`
`1006).
`
`12.
`
`It is my understanding that, Google, Inc. (“Google”) filed a
`
`reexamination request with the United States Patent and Trademark Office
`
`(“USPTO,” “The Office”). In this proceeding, Google submitted that a number of
`
`pieces of prior art, anticipated or rendered obvious the disputed claims of the ‘571
`
`patent. I understand that as a result of these proceedings, the USPTO issued a
`
`reexamination certificate for the patent, affirming that all of these claims were
`
`patentable over the art considered.
`
`IV. Materials Reviewed
`13.
`In performing the analysis that is the subject of my testimony, I
`
`reviewed the ‘571 patent and its file history, as well as various public documents
`
`from litigations in the U.S. District Court for Northern District of California,
`
`including Software Rights Archive, LLC v. Facebook, Inc., 12-cv-3970 (N.D. Cal.),
`
`Software Rights Archive, LLC v. LinkedIn Corp., 12-cv-3971 (N.D. Cal.), Software
`
`Rights Archive, LLC v. Twitter, Inc., 12-cv-3972 (N.D. Cal.), and Software Rights
`
`
`
`5
`
`

`

`Archive, LLC v. Google, Case No. C-08-03172 RMW (N.D. Cal.). I have also
`
`reviewed, in detail, the many thousands of pages of references, charts, and other
`
`documents put forth by the Petitioners in this case and in the previous related
`
`matters. The documents include: (1) the Petition and the documents and references
`
`referred to in the Petition; (2) the declaration of Edward Fox, Ph.D. (Exhibit 1003)
`
`(the “Fox Declaration”); (3) the Patent Owner’s Preliminary Response (Paper No.
`
`13); (4) the Board’s decision regarding institution (“Institution Decision”) (Paper
`
`No. 16); and (5) the transcripts of the April 26 and 27, 2014, Deposition of Edward
`
`Fox (Exhibit 2016; the “Fox Deposition Transcript Pt. 1” and Exhibit 2017; the
`
`“Fox Deposition Transcript Pt. 2”), and the exhibits referred to in the Fox
`
`Deposition Transcripts.
`
`14. Additionally, I reviewed a number of materials relating to the field of
`
`information retrieval and computerized search, and in particular, the use of
`
`semantic and non-semantic indexing and search techniques both before and after
`
`the filing of the ‘571 patent. All of the materials that I considered are listed in
`
`Appendix B. I have also taken into account my knowledge of information
`
`retrieval, computerized search, and related technologies gained from over 30 years
`
`of experience in the field
`
`
`
`
`
`
`
`6
`
`

`

`V.
`
`Summary of Opinions
`15.
`
`I have examined, in detail, many thousands of pages of references,
`
`charts, and other documents put forth by the Petitioners in this case and in the
`
`previous related matters. It is my opinion that the cited references would not have
`
`rendered any of the claims obvious to one of ordinary skill in the art at the time the
`
`invention was made, as the concept of obviousness has been explained to me.
`
`16. Each of the individual references put forth, as well as each
`
`combination of references proposed, omits multiple limitations from all of the
`
`claims being considered. In addition, the combinations and extensions suggested
`
`by the Petitioners2 involve pieces of experimental research that were, at best,
`
`inconclusive. The missing claim elements are not disclosed or suggested by the
`
`cited references, and were not known in the art as of the May 17, 1996 priority date
`
`of the ‘571 patent.
`
`17. The challenged claims of the ‘571 patent apply to networks of
`
`documents with hyperjump (hyperlink) data, or to the web embodiment of such
`
`
`2 When I refer to the “Petitioners” in my declaration and to the allegations and
`
`arguments they put forth in these proceedings, I am, in many cases, also referring
`
`to the testimony of Dr. Fox and, to the extent that the Board has relied on these
`
`allegations and arguments, to the Board as well.
`
`
`
`7
`
`

`

`networks where pages are connected to one another via URL links. Particularly,
`
`the specification and claims of the ‘571 patent describe several novel and
`
`nonobvious features of the invention with respect to hypertext and the web,
`
`including treating web pages as documents, treating links as citations, analyzing
`
`URLs, and determining the relatedness of pages using either the cluster link
`
`generation algorithm or proximity indexing.
`
`18. Claims 12 and 21 of the ‘571 patent combine the use of cluster
`
`analyzing links, and chains of links to determine the relationship between pages,
`
`with the features of the Web such as web pages and URLs. Claim 22 of the ‘571
`
`patent applies “proximity indexing,” which generates representations of the
`
`relationships, patterns, or similarity to determine the degree of relatedness between
`
`database objects, to hyperjump data.
`
`19. The cited art does not teach or suggest, for example, analyzing URLs
`
`for web pages, determining hyperjump data indirectly related to a chosen
`
`document, or any of the related features of the claims. However, the Petition3
`
`
`3 When I refer to the “Petition” in my declaration and to the allegations and
`
`arguments put forth in the Petition, I am, in many cases, also referring to the
`
`Declaration of Dr. Fox and, to the extent that the Board has relied on these
`
`allegations and arguments, to the Board as well.
`
`
`
`8
`
`

`

`seems to assume that every element related to the web or to hypertext would have
`
`been obvious, as a matter of law, or because hypertext was known. I disagree.
`
`The Web was known before 1996, and hypertext had been known long before the
`
`Web. I am unaware of any example where the relied-upon citation metrics such as
`
`bibliographic coupling and co-citation had been applied to the web or to hypertext
`
`networks prior to 1996. While information retrieval methods were often applied
`
`to the Web before 1996, (i.e., using inverted indices, ranking in Web search
`
`engines, etc.), the inventive step of treating Web links as citations was, by all
`
`indications, novel and nonobvious.
`
`20. The Petition fails to produce any support for the argument that these
`
`features would have been obvious to one of ordinary skill in the art in 1996 absent
`
`impermissible hindsight. The Petitioners’ supporting documents offer nothing
`
`beyond the acknowledgement of the mere existence of the Web and hypertext at
`
`the time of the invention, and the need to combine hypertext with retrieval as
`
`reasons for obviousness.
`
`21. The Petition ignores the fact that the challenged claims of the ‘571
`
`patent do not include simply slapping a browser on the front end of a search system
`
`or using the Internet as a platform for storing and retrieving documents. The
`
`challenged claims of the ‘571 patent all recite specific functions applied to the
`
`Web, such as analyzing hyperlinks, that are non-obvious. Steps such as “cluster
`
`
`
`9
`
`

`

`analyzing the [URLs]” and “proximity analyzing the identified hyperjump data”
`
`are not taught or suggested in the cited art and are non-obvious.
`
`22. Not only would one of ordinary skill in the art refrain from combining
`
`the Web features with Fox Thesis and Fox SMART, claimed method steps are
`
`entirely missing from the combination of Fox Thesis, Fox SMART, and Envision.
`
`For example, the cited art fails to disclose or suggest “identifying Universal
`
`Resource Locators for the web pages” and “cluster analyzing the Universal
`
`Resource Locators for indirect relationships,” as recited in claim 12.
`
`23. Furthermore, the cited art is devoid of any disclosure or suggestion of
`
`the candidate cluster link features of claim 21 such as “generating candidate cluster
`
`links,” “non-semantically generating a set of cluster links”; “assigning weights to
`
`the candidate cluster links,” and “deriving actual cluster links.
`
`24. Additionally, the cited art fails to disclose and would not have
`
`suggested any type of “proximity indexing the identified hyperjump data” or
`
`“generating a source map” as recited in claim 22.
`
`25.
`
` The differences between the claim steps and the relied-upon
`
`disclosures are not minor variations; they represent fundamental differences
`
`between the claimed invention and the prior art.
`
`
`
`
`
`
`
`10
`
`

`

`VI. The Claims of the ’571 Patent
`26. Claim 12 of the ‘571 patent uses “cluster analyzing” to derive
`
`relationships and applies to web pages and URLs:
`
`A method for visually displaying data related to a web
`having identifiable web pages and Universal Resource
`Locators with pointers, comprising:
`choosing an identifiable web page;
`identifying Universal Resource Locators for the web
`pages, wherein the identified Universal Resource Locators
`either point to or point away from the chosen web page;
`analyzing Universal Resource Locators, including the
`identified Universal Resource Locators, wherein Universal
`Resource Locators which have an indirect relationship to the
`chosen web page are located, wherein the step of analyzing
`further comprises cluster analyzing the Universal Resource
`Locators for indirect relationships; and
`displaying identities of web pages, wherein the
`located Universal Resource Locators are used to identify
`web pages.
`’571 patent at 52:38-56.
`27. This claim combines the use of “cluster analyzing”, which refers to
`
`the cluster link generator in the specification and applies statistical analysis to
`
`“determine the relatedness of web pages” that have an indirect relationship with
`
`one another. ’571 patent at 49:37-50:27. The “identifying” and “analyzing” steps
`
`are linked with a direct reference, “the chosen web page,” meaning effectively that
`11
`
`
`
`

`

`URLs from and to a given page must be analyzed to determine the indirect
`
`relationships for that page. ’571 patent at 52:43-54.
`
`28. The language of the “analyzing” step is very specific with respect to
`
`what is analyzed. The analysis must include “the identified [URLs]”, i.e. the
`
`URLs that have been identified as directly pointing to or from a given page;
`
`therefore, “cluster analyzing” also must include analyzing those directly identified
`
`URLs, but should also include other URLs such as those located as being indirectly
`
`related. The explicit connection between these two components of the analysis
`
`step (i.e., locating indirect relationships and analyzing the direct relationships
`
`along with the indirect relationships) excludes most if not all of the Petitioners’ art.
`
`29. Claim 21 applies to “hyperjump” data and, with respect to claim 12,
`
`replaces “cluster analyzing” with the steps of the generating and deriving cluster
`
`links:
`
`A method of displaying information about a network
`that has hyperjump data, comprising:
`choosing a node;
`accessing the hyperjump data;
`identifying hyperjump data from within the accessed
`hyperjump data that has a direct reference to the chosen
`node;
`
`determining hyperjump data from within the accessed
`hyperjump data that has an indirect reference to the chosen
`
`
`
`12
`
`

`

`node using the identified hyperjump data, wherein the step
`of determining comprises non-semantically generating a set
`of candidate cluster links for nodes indirectly related to the
`chosen node using the hyperjump data, assigning weights to
`the candidate cluster links and deriving actual cluster links
`from the set of candidate cluster links based on the assigned
`weights; and
`displaying one or more determined hyperjump data.
`’571 patent at 2:38-56.
`
`30. The “determining” step of claim 21 specifically requires “using the
`
`identified hyperjump data” (i.e., the hyperjump data that is identified as being
`
`directly related to the chosen node). None of the cited art, separately or in
`
`combination, teaches or renders obvious the steps of this claim.
`
`31. Claim 22 involves using hyperjump data to determine nodes indirectly
`
`related to a chosen node, including proximity indexing the hyperjump data, and
`
`generating a source map using the determined hyperjump data:
`
`A method for displaying information about a network
`that has hyperjump data, comprising:
`
`choosing a node;
`
`accessing the hyperjump data;
`
`
`
`13
`
`

`

`identifying hyperjump data from within the accessed
`hyperjump data that has a direct reference to the chosen
`node;
`
`determining hyperjump data from within the accessed
`hyperjump data that has an indirect reference to the chosen
`node by proximity indexing the identified hyperjump data;
`and
`
`displaying one or more determined hyperjump data,
`wherein the nodes are nodes in the network that may be
`accessed, the hyperjump data includes hyperjump links
`between nodes in the network, and the step of displaying
`comprises:
`
`generating a source map using one or more of the
`determined hyperjump data, wherein the source map
`represents hyperjump links that identify the chosen node as a
`destination of a link, and wherein the method further
`comprises activating a link represented on the source map,
`wherein a user may hyperjump to a node represented as a
`node of the link.
`
`‘571 patent at 2:57 -3:12.
`
`32. The limitations of claim 22 above, such as the “proximity indexing”
`
`and “source map” limitations, are tied to the other claim steps in specific ways,
`
`such as “proximity indexing the identified hyperjump data” and “the source map
`
`
`
`14
`
`

`

`represents hyperjump links that identify the chosen node as a destination of a link”.
`
`The combination of Fox Thesis, Fox SMART, and Envision does not teach these
`
`features as claimed.
`
`VII. Legal Principles Used in Analysis
`33.
`I am not a patent attorney nor have I independently researched the law
`
`on patentability. Rather, Patent Owner’s attorneys have explained the legal
`
`principles to me that I have relied on in forming my opinions set forth in this
`
`declaration.
`
`A. A Person of Ordinary Skill in the Art
`34.
`I understand that the person of ordinary skill in the art is a
`
`hypothetical person who is presumed to have known the relevant art at the time of
`
`the invention. Factors that may be considered in determining the level of ordinary
`
`skill in the art may include: (A) the type of problems encountered in the art; (B)
`
`prior art solutions to those problems; (C) rapidity with which innovations are
`
`made; (D) sophistication of the technology; and (E) educational level of active
`
`workers in the field. In a given case, every factor may not be present, and one or
`
`more factors may predominate.
`
`35.
`
`I understand that a person of ordinary skill in the art is also a person
`
`of ordinary creativity, not an automaton. I further understand that the hypothetical
`
`person having ordinary skill in the art to which the claimed subject matter pertains
`
`
`
`15
`
`

`

`would, of necessity, have the capability of understanding the scientific and
`
`engineering principles applicable to the pertinent art.
`
`B. Claim Construction
`36.
`I understand that, in an inter partes review, the interpretation of the
`
`claims of an expired patent is similar to that of a district court’s review, and that
`
`the words of a claim are generally given their ordinary and customary meaning as
`
`understood by a person of ordinary skill in the art in question at the time of the
`
`invention.
`
`37.
`
`I also understand that, in determining the meaning of a disputed claim
`
`limitation, the intrinsic evidence of record is considered by examining the claim
`
`language itself, the written description, and the prosecution history. I further
`
`understand that a patentee may act as its own lexicographer and depart from the
`
`ordinary and customary meaning by defining a term with reasonable clarity,
`
`deliberateness and precision, but that there is a heavy presumption that a claim
`
`term carries its ordinary and customary meaning.
`
`38. For the purposes of my evaluation of the patentability of claims 12,
`
`21, and 22 of the ‘571 patent and my opinions set forth herein, I used the Board’s
`
`construction of the claim language set forth on pages 8-11 of the Board’s
`
`Institution Decision.
`
`
`
`
`
`16
`
`

`

`C.
`39.
`
`Prior Art
`
`I have been informed that the law provides categories of information
`
`(known as “prior art”) that may be used to anticipate or render obvious patent
`
`claims. I have been informed that, to be prior art with respect to a particular
`
`patent, a reference must have been made, known, used, published, or patented, or
`
`be the subject of a patent application by another, before the priority date of the
`
`patent. I also understand that a person of ordinary skill in the art is presumed to
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`have knowledge of all prior art. For purposes of this opinion, I have been asked to
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`presume that of reference materials that I opine on, i.e., Fox SMART and Fox
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`Thesis, are prior art from a technical perspective – that is, all were available to a
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`person of ordinary skill in the art on or before the priority date of the patent.
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`D.
`40.
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`Patentability
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`I have been informed that a determination of whether the claims of a
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`patent are anticipated or rendered obvious by prior art is a two-step analysis: (1)
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`determining the meaning and scope of the claims, and (2) comparing the properly
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`construed claims to the prior art. I have endeavored to undertake this process
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`herein.
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`41.
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`I have been informed and understand that, even if every element of a
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`claim is not found explicitly or implicitly in a single prior art reference, the claim
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`may still be unpatentable if the differences between the claimed elements and the
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`prior art are such that the subject matter as a whole would have been obvious at the
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`time the invention was made to a person of ordinary skill in the art.
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`42.
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`I have been informed and understand that a patent is obvious when it
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`is only a combination of old and known elements, with no change in their
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`respective functions, and that these familiar elements are combined according to
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`known methods to obtain predictable results. I have been informed and understand
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`that the following four factors are considered when determining whether a patent
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`claim is obvious: (1) the scope and content of the prior art; (2) the differences
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`between the prior art and the claim; (3) the level of ordinary skill in the art; and (4)
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`additional considerations of objective evidence, sometimes referred to as
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`“secondary considerations,” tending to prove obviousness or nonobviousness. The
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`additional considerations include: unexpected, surprising, or unusual results;
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`nonanalogous art; teachings away from the invention; substantially superior
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`results; synergistic results; long-standing need; commercial success; and copying
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`by others. I have also been informed and understand that there must be a
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`connection between these additional factors and the scope of the claim language.
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`43.
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`I have also been informed and understand that some examples of
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`rationales that may support a conclusion of obviousness include:
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`(A) combining prior art elements according to known methods to
`yield predictable results;
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`(B) simply substituting one known element for another to obtain
`predictable results;
`(C) using known techniques to improve similar devices (methods, or
`products) in the same way;
`(D) applying a known technique to a known device (method, or
`product) ready for improvement to yield predictable results;
`(E) choosing from a finite number of identified, predictable solutions,
`with a reasonable expectation of success—in other words, whether
`something is “obvious to try”;
`(F) using work in one field of endeavor to prompt variations of that
`work for use in either the same field or a different one based on design
`incentives or other market forces if the variations are predictable to
`one of ordinary skill in the art; and
`(G) arriving at a claimed invention as a result of some teaching,
`suggestion, or motivation in the prior art that would have led one of
`ordinary skill to modify the prior art reference or to combine prior art
`reference teachings.
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`I have also been informed that other rationales to support a conclusion of
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`obviousness may be relied upon, for instance, that common sense (where
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`substantiated) may be a reason to combine or modify prior art to achieve the
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`claimed invention.
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`44.
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`I am also informed that a basis to combine teachings need not be
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`stated expressly in any prior art reference. However, I understand that there must
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`be some evidence showing an articulated reasoning with rational underpinnings to
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`support a motivation to combine teachings and to support the legal conclusion of
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`obviousness.
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`VIII. A Person of Ordinary Skill in the Relevant Art
`45.
`I understand that my assessment and determination of the patentability
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`of the challenged claims of the