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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`RPX CORPORATION
`Petitioner,
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`
`
`
`
`
`
`
`v.
`VIRNETX, INC. AND SCIENCE APPLICATIONS INTERNATIONAL
`CORPORATION,
`Patent Owners
`
`Patent No. 7,921,211
`Issued: April 5, 2011
`Filed: August 17, 2007
`Inventors: Victor Larson, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`USING SECURE DOMAIN NAMES
`
`____________________
`
`Inter Partes Review No. IPR2014-00175
`__________________________________________________________________
`
`
`Declaration of Michael Fratto Regarding
`
`U.S. Patent No. 7,921,211
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`
`
`Petitioner RPX – Ex. 1003
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`
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`1, Michael Fratto, do hereby declare and state, that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true; and further that these statements
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`were made with the knowledge that willful false statements and the like so made are punishable by fine or
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`imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
`
`Dated: November 20, 2013
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`Page ii
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`I.
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`II.
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`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`A.
`Engagement .......................................................................................... 1
`B.
`Background and Qualifications ............................................................ 1
`C.
`Compensation and Prior Testimony ..................................................... 4
`D.
`Information Considered ........................................................................ 4
`LEGAL STANDARDS FOR PATENTABILITY ......................................... 5
`A. Anticipation .......................................................................................... 7
`B. Obviousness .......................................................................................... 8
`III. THE ’211 PATENT ...................................................................................... 13
`A.
`Effective Filing Date of the ’211 Patent ............................................ 13
`B.
`Prosecution History of the ’211 Patent .............................................. 16
`C.
`The Person of Ordinary Skill in the Art ............................................. 16
`D. Overview of the Claims of the ’211 Patent ........................................ 17
`E.
`Description of the Background Technology Relevant to the
`’211 Patent .......................................................................................... 17
`1.
`The Open Internet .................................................................... 17
`2.
`Domain Names and the Domain Name System (DNS) ........... 19
`a.
`The DNS System ........................................................... 19
`b.
`Domain Names and URIs .............................................. 22
`c.
`Domain Name Resolution ............................................. 24
`Encryption, Tunnels, and Data Security .................................. 31
`a.
`Encryption ...................................................................... 31
`b.
`Authentication ................................................................ 33
`c.
`IPSec – RFC 2401 ......................................................... 37
`d.
`Tunneling ....................................................................... 38
`VPNs ........................................................................................ 41
`4.
`Connection Indicators .............................................................. 42
`5.
`IV. GENERAL ISSUES RELATED TO MY PATENTABILITY
`ANALYSIS ................................................................................................... 46
`
`3.
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`Petitioner RPX – Ex. 1003
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`V.
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`
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`A.
`B.
`
`C.
`
`The Claims of the ’211 Patent I Am Addressing in this Report ........ 46
`Interpretation of Certain Claim Terms ............................................... 57
`1.
`Domain Name (Claims 1-3, 5-8 and 14-60) ............................ 58
`2.
`Domain Name Service System (Claims 1-3, 5-8 and 14-
`60) ............................................................................................ 58
`Indication (Claims 1-3, 5-8, and 14-60) .................................. 61
`3.
`Secure Communication Link (Claims 1-3, 5-8 and 14-60) ..... 62
`4.
`Secure Name (Claims 3, 24, 25, 48, and 49) ........................... 65
`5.
`Prior Art References ........................................................................... 65
`1.
`Exhibit 1007 – Aventail Connect v3.01/2.51
`Administrator’s Guide (“Aventail”) ........................................ 66
`Exhibit 1008 – U.S. Patent 6,496,867 to Provino .................... 67
`2.
`Exhibit 1009 – U.S. Patent 6,496,867 to Beser ....................... 67
`3.
`Request for Comment (RFC) Publications .............................. 68
`4.
`PATENTABILITY ANALYSIS OF CLAIMS 1-3, 5-8, AND 14-60
`OF THE ’211 PATENT ................................................................................ 70
`A. U.S. Patent No. 6,496,867 to Beser .................................................... 70
`1.
`Overview of Beser ................................................................... 70
`2.
`Overview of RFC 2401 ............................................................ 96
`3.
`Comparison of Beser to Claims 1-3, 5-8, and 14-60 of the
`’211 Patent ............................................................................. 108
`a.
`Claims 1, 36 and 60 ..................................................... 108
`i.
`Preamble .............................................................108
`ii.
`Connection to communication network .............110
`iii.
`Storage of Plurality of Domain Names and
`Corresponding network addresses ......................111
`iv. Receiving Query for a Network Address ...........111
`v.
`Indicate That the Domain Name Service
`System Supports Establishing a Secure
`Communication Link ..........................................112
`Claim 17 ....................................................................... 117
`Claim 41 ....................................................................... 118
`
`b.
`c.
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`Claims 2 and 37 ........................................................... 120
`d.
`Claim 3 ......................................................................... 121
`e.
`Claim 5 ......................................................................... 122
`f.
`Claim 6 ......................................................................... 123
`g.
`Claim 7 ......................................................................... 123
`h.
`Claim 8 ......................................................................... 123
`i.
`Claims 14 and 38 ......................................................... 125
`j.
`Claims 15 and 39 ......................................................... 125
`k.
`Claims 16 and 40 ......................................................... 126
`l.
`m. Claims 18 and 42 ......................................................... 129
`n.
`Claims 19 and 43 ......................................................... 130
`o.
`Claims 20 and 44 ......................................................... 130
`p.
`Claims 21 and 45 ......................................................... 131
`q.
`Claims 22 and 46 ......................................................... 132
`r.
`Claims 23 and 47 ......................................................... 133
`s.
`Claims 24 and 48 ......................................................... 133
`t.
`Claims 25 and 49 ......................................................... 135
`u.
`Claims 26 and 50 ......................................................... 136
`v.
`Claims 27 and 51 ......................................................... 137
`w.
`Claims 28 and 52 ......................................................... 139
`x.
`Claims 29 and 53 ......................................................... 140
`y.
`Claims 30 and 54 ......................................................... 141
`z.
`Claims 31 and 55 ......................................................... 141
`aa. Claims 32 and 56 ......................................................... 142
`bb. Claims 33 and 57 ......................................................... 143
`cc. Claims 34 and 58 ......................................................... 144
`dd. Claims 35 and 59 ......................................................... 145
`C-HTTP - The Development of a Secure, Closed HTTP-based
`Network on the Internet,” published in the Proceedings of
`SNDSS 1996 (“Kiuchi”) .................................................................. 148
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`B.
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`1.
`2.
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`
`
`Overview of Kiuchi .......................................................................... 149
`Comparison of Kiuchi to Claims 1-3, 5-8, and 14-60 of the ’211
`Patent ................................................................................................ 160
`a.
`Claims 1, 36 and 60 ..................................................... 160
`i.
`Preamble .............................................................160
`ii.
`Connection to a Communication Network .........162
`iii.
`Store a plurality of domain names and
`corresponding network addresses ......................163
`iv. Receiving query for a network address ..............164
`v.
`Indicate [] whether the Domain Name
`Service System Supports Establishing a
`Secure Communication Link ..............................165
`Claim 2, 3 and 37 ......................................................... 167
`b.
`Claim 5 ......................................................................... 168
`c.
`Claim 6 ......................................................................... 169
`d.
`Claim 7 ......................................................................... 169
`e.
`Claim 8 ......................................................................... 170
`f.
`Claims 14 and 38 ......................................................... 171
`g.
`Claims 15 and 39 ......................................................... 171
`h.
`Claims 16 and 40 ......................................................... 173
`i.
`Claims 17 and 41 ......................................................... 175
`j.
`Claims 18 and 42 ......................................................... 176
`k.
`Claims 19 and 43 ......................................................... 177
`l.
`m. Claims 20 and 44 ......................................................... 178
`n.
`Claims 21 and 45 ......................................................... 179
`o.
`Claims 22 and 46 ......................................................... 182
`q.
`Claims 24 and 48 ......................................................... 183
`r.
`Claims 25 and 49 ......................................................... 184
`s.
`Claims 26 and 50 ......................................................... 185
`Claims 27 and 51 ......................................................... 186
`t.
`u.
`Claims 28 and 52 ......................................................... 187
`v.
`Claims 29 and 53 ......................................................... 188
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`Claims 30 and 54 ......................................................... 189
`w.
`Claims 31 and 55 ......................................................... 190
`x.
`Claims 32 and 56 ......................................................... 190
`y.
`Claims 33 and 57 ......................................................... 191
`z.
`aa. Claims 34 and 58 ......................................................... 192
`bb. Claims 35 and 59 ......................................................... 194
`CONCLUSION ................................................................................ 195
`
`C.
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`TABLE OF APPENDICES
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`Appendix A:
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`
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`List of Materials Considered
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`Page viii
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`Petitioner RPX – Ex. 1003
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`I. INTRODUCTION
`A. Engagement
`I have been retained by counsel for RPX Corp. as an expert witness in
`1.
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`the above-captioned proceeding. I have been asked to provide my opinion about
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`the state of the art of the technology described in U.S. Patent No. 7,418,211 (“the
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`’211 patent”) and on the patentability of claims 1-3, 5-8 and 14-60 of the ’211
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`patent. The following is my written report on these topics.
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`B. Background and Qualifications
`2. My Curriculum Vitae is submitted herewith as Exhibit 1004.
`
`3.
`
`I received a Bachelor’s of Science Degree from Syracuse University
`
`in 2001 in Information Science and Technology.
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`4.
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`I began working in the field of computer science in 1987. Between
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`1987 and 1992, I was a consultant where I wrote software that would connect
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`remote offices and collect/process data for input into other programs.
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`5.
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`Between 1994 and 1997, I was a freelance editor for Network
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`Computing, where I covered remote access and telecommunications products and
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`technologies. I held this position while earning my B.S. in Information Science
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`and Technology from Syracuse University.
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`6.
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`Between June 1997 and June of 2004, I was a permanent employee of
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`Network Computing, starting as an Associate Technology Editor and rising to
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`Senior Technology Editor. In these capacities, I focused on network security
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`Petitioner RPX – Ex. 1003
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`solutions and products, which was a rapidly evolving field at that time. I have
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`subsequently held a number of other positions with Network Computing, as well as
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`affiliated publications. For example, from July 2004 to April 2006, I served as
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`Editor of Secure Enterprise Magazine – which focused on security solutions
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`specific to enterprise systems. After April 2006, I returned to Network Computing,
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`where I served in a progression of senior positions, ultimately serving as Editor of
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`Network Computing between August 2009 and October of 2012.
`
`7.
`
`I am presently a Senior Analyst with Current Analysis. In this respect
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`I manage the Enterprise Networking practice within the business and technology
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`and software group. I also provide competitive analysis on trends and changes in
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`the enterprise networking markets as well as consult with network equipment
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`vendors on product messaging, marketing, and outreach.
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`8.
`
`I presently serve as an adjunct faculty member of School of
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`Information Studies at Syracuse University.
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`9.
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`I have been studying, evaluating, testing and describing networking,
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`networking security and related technologies for more than 15 years. Since well
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`before 1999, I have had an extensive background and experience in network
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`systems, software and related technologies, with a particular focus on network
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`security.
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`10.
`
`I also have extensive hands-on experience with wide range of
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`Petitioner RPX – Ex. 1003
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`networking and networking security products developed and sold in the 1993 to
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`2002 time frame. This came from my various positions with Network Computing,
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`where I reviewed, tested and described these products in a technical publication
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`devoted to this field. I also wrote articles about network infrastructure, data center,
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`and network access control items that were published by Network Computing. I
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`also am very familiar with Internet standards governing networking and security,
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`which I discuss below.
`
`11. A substantial amount of my extensive experience with networking and
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`security systems used in the late 1990s came from my work in reviewing these
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`products for Network Computing. When I performed a typical review of a new
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`product, I would first define a “problem set” the product was designed to address.
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`I would interview IT administrators and executives and speak with the developers
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`of the product. I also would study the standards relevant to the product or its
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`implementation, and would evaluate the technical documentation accompanying
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`the product. I would then create a set of comparative measures to assess the ability
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`of the product to execute. I would then test the product under a variety of
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`situations designed to evaluate these comparative measures. To do this, I would
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`set up a test network, verify its operation, conduct the tests, and ensure the results
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`were accurate. I would also often compare the product to other products in the
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`same class or category.
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`3
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`Petitioner RPX – Ex. 1003
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`12.
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`In the 1997 to 2000 time frame, I was particularly focused on remote
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`access products including modems, ISDN, and virtual private networking products,
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`technologies, and standards as well as network and host-based firewalls.
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`13.
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`I am the author of several books and publications devoted to secure
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`networking technologies. I also have taught a number of courses on systems and
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`technologies used in networking security, particularly focused on Internet security
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`solutions. These books and courses are listed on my C.V. (Ex. 1004).
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`C. Compensation and Prior Testimony
`I am being compensated at a rate of $250 per hour for my study and
`14.
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`testimony in this matter. I am also being reimbursed for reasonable and customary
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`expenses associated with my work and testimony in this investigation. My
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`compensation is not contingent on the outcome of this matter or the specifics of my
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`testimony.
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`15.
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`16.
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`I have never testified in Federal District Court.
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`I have provided declarations that were submitted in inter partes
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`reexamination proceedings involving the ’504 and ’211 patents and other patents
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`owned by Patent Owner. These proceedings include Control No. 95/001,682,
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`95/001,679, 95/001,788 and 95/001,789.
`
`Information Considered
`
`D.
`17. My opinions are based on my years of education, research and
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`Petitioner RPX – Ex. 1003
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`experience, as well as my investigation and study of relevant materials. In forming
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`my opinions, I have considered the materials I identify in this report and those
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`listed in Appendix A.
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`18.
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`I may rely upon these materials and/or additional materials to respond
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`to arguments raised by the Patent Owner. I may also consider additional
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`documents and information in forming any necessary opinions — including
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`documents that may not yet have been provided to me.
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`19. My analysis of the materials produced in this investigation is ongoing
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`and I will continue to review any new material as it is provided. This report
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information
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`and on my continuing analysis of the materials already provided.
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`II. LEGAL STANDARDS FOR PATENTABILITY
`In expressing my opinions and considering the subject matter of the
`20.
`
`claims of the ’211 patent, I am relying upon certain basic legal principles that
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`counsel has explained to me.
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`21. First, I understand that for an invention claimed in a patent to be
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`found patentable, it must be, among other things, new and not obvious from what
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`was known before the invention was made.
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`22.
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`I understand the information that is used to evaluate whether an
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`invention is new and not obvious is generally referred to as “prior art” and
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`generally includes patents and printed publications (e.g., books, journal
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`publications, articles on websites, product manuals, etc.).
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`23.
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`I understand in this proceeding RPX has the burden of proving that
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`the ’211 patent is anticipated by or obvious from the prior art by a preponderance
`
`of the evidence. I understand that “a preponderance of the evidence” is evidence
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`sufficient to show that a fact is more likely true than it is not.
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`24.
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`I understand that in this proceeding, the claims must be given their
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`broadest reasonable interpretation consistent with the specification. The claims
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`after being construed in this manner are then to be compared to the information in
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`the prior art.
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`25.
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`I understand that in this proceeding, the information that may be
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`evaluated is limited to patents and printed publications. My analysis below
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`compares the claims to patents and printed publications that are prior art to the
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`claims.
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`26.
`
`I understand that there are two ways in which prior art may render a
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`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
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`claim. Second, the prior art can be shown to have made the claim “obvious” to a
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`person of ordinary skill in the art. My understanding of the two legal standards is
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`set forth below.
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`Petitioner RPX – Ex. 1003
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`A. Anticipation
`I understand that the following standards govern the determination of
`27.
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`whether a patent claim is “anticipated” by the prior art.
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`28.
`
`I have applied these standards in my evaluation of whether claims 1-3,
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`5-8 and 14-60 of the ’211 patent would have been anticipated by the prior art.
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`29.
`
`I understand that the “prior art” includes patents and printed
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`publications that existed before the earliest filing date (the “effective filing date”)
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`of the claim in the patent. I also understand that a patent will be prior art if it was
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`filed before the effective filing date of the claimed invention, while a printed
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`publication will be prior art if it was publicly available before that date.
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`30.
`
`I understand that, for a patent claim to be “anticipated” by the prior
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`art, each and every requirement of the claim must be found, expressly or
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`inherently, in a single prior art reference as recited in the claim. I understand that
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`claim limitations that are not expressly described in a prior art reference may still
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`be there if they are “inherent” to the thing or process being described in the prior
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`art. For example, an indication in a prior art reference that a particular process
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`complies with a published standard would indicate that the process must inherently
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`perform certain steps or use certain data structures that are necessary to comply
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`with the published standard.
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`31.
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`I understand that it is acceptable to consider evidence other the
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`Petitioner RPX – Ex. 1003
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`information in a particular prior art document to determine if a feature is
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`necessarily present in or inherently described by that reference.
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`B. Obviousness
`I understand that a claimed invention is not patentable if it would have
`32.
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`been obvious to a person of ordinary skill in the field of the invention at the time
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`the invention was made.
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`33.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows:
`
`A patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the
`invention was made.
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`34.
`
`I understand that the following standards govern the determination of
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`whether a claim in a patent is obvious. I have applied these standards in my
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`evaluation of whether claims 1-3, 5-8 and 14-60 of the ’211 patent would have
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`been considered obvious in February of 2000.
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`35.
`
`I understand that to find a claim in a patent obvious, one must make
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`certain findings regarding the claimed invention and the prior art. Specifically, I
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`Petitioner RPX – Ex. 1003
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`understand that the obviousness question requires consideration of four factors
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`(although not necessarily in the following order):
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`• The scope and content of the prior art;
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`• The differences between the prior art and the claims at issue;
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`• The knowledge of a person of ordinary skill in the pertinent art; and
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`• Whatever objective factors indicating obviousness or non-obviousness
`may be present in any particular case.
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`36.
`
` In addition, I understand that the obviousness inquiry should not be
`
`done in hindsight, but must be done using the perspective of a person of ordinary
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`skill in the relevant art as of the effective filing date of the patent claim.
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`37.
`
`I understand the objective factors indicating obviousness or non-
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`obviousness may include: commercial success of products covered by the patent
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`claims; a long-felt need for the invention; failed attempts by others to make the
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`invention; copying of the invention by others in the field; unexpected results
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`achieved by the invention; praise of the invention by the infringer or others in the
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`field; the taking of licenses under the patent by others; expressions of surprise by
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`experts and those skilled in the art at the making of the invention; and the patentee
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`proceeded contrary to the accepted wisdom of the prior art.
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`38.
`
`I understand the combination of familiar elements according to known
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`methods is likely to be obvious when it does no more than yield predictable results.
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`Petitioner RPX – Ex. 1003
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`I also understand that an example of a solution in one field of endeavor may make
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`that solution obvious in another related field. I also understand that market
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`demands or design considerations may prompt variations of a prior art system or
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`process, either in the same field or a different one, and that these variations will
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`ordinarily be considered obvious variations of what has been described in the prior
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`art.
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`39.
`
`I also understand that if a person of ordinary skill can implement a
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`predictable variation, that variation would have been considered obvious. I
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`understand that for similar reasons, if a technique has been used to improve one
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`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 that technique to improve the other
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`device would have been obvious unless its actual application yields unexpected
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`results or challenges in implementation.
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`40.
`
`I understand that the obviousness analysis need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, but
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`instead can take account of the “ordinary innovation” and experimentation that
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`does no more than yield predictable results, which are inferences and creative steps
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`that a person of ordinary skill in the art would employ.
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`41.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design
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`Petitioner RPX – Ex. 1003
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`community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art. I understand that all these
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`issues may be considered to determine whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.
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`42.
`
`I understand that the obviousness analysis cannot be confined by a
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`formalistic conception of the words “teaching, suggestion, and motivation.” I
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`understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.
`
`Teleflex, Inc. where the Court rejected the previous requirement of a “teaching,
`
`suggestion, or motivation to combine” known elements of prior art for purposes of
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`an obviousness analysis as a precondition for finding obviousness. It is my
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`understanding that KSR confirms that any motivation that would have been known
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`to a person of skill in the art, including common sense, or derived from the nature
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`of the problem to be solved, is sufficient to explain why references would have
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`been combined.
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`43.
`
`I understand that a person of ordinary skill attempting to solve a
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`problem will not be led only to those elements of prior art designed to solve the
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`same problem. I understand that under the KSR standard, steps suggested by
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`common sense are important and should be considered. Common sense teaches
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`that familiar items may have obvious uses beyond the particular application being
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`described in a reference, that if something can be done once it is obvious to do it
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`multiple times, and in many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
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`considered can be directed to any need or problem known in the field of endeavor
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`in February of 2000 and can provide a reason for combining the elements of the
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`prior art in the manner claimed. In other words, the prior art does not need to be
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`directed towards solving the same problem that is addressed in the patent. Further,
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`the individual prior art references themselves need not all be directed towards
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`solving the same problem.
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`44.
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`I understand that an invention that might be considered an obvious
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`variation or modification of the prior art may be considered non-obvious if one or
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`more prior art references discourages or lead away from the line of inquiry
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`disclosed in the reference(s). A reference does not “teach away” from an invention
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`simply because the reference suggests that another embodiment of the invention is
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`better or preferred. My understanding of the doctrine of teaching away requires a
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`clear indication that the combination should not be attempted (e.g., because it
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`would not work or explicit statements saying the combination should not be made.
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`45.
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`I understand that a person of ordinary skill is also a person of ordinary
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`creativity.
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`46.
`
`I further understand that in many fields, it may be that there is little
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`discussion of obvious techniques or combination, and it often may be the case that
`
`12
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`Petitioner RPX – Ex. 1003
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`
`
`
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`market demand, rather than scientific literature or knowledge, will drive design
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`trends. When there is such a design need or market pressure to solve a problem
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`and there are a finite number of identified, predictable solutions, a person of
`
`ordinary skill has good reason to pursue the known options within their technical
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`grasp. If this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense. In that instance the fact that a
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`combination was obvious to try might show that it was obvious. The fact that a
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`particular combination of prior art elements was “obvious to try” may indicate that
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`the combination was obvious even if no one attempted the combination. If the
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`combination was obvious to try (regardless of whether it was actually tried) or
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`leads to anticipated success, then it is likely the result of ordinary skill and
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`common sense rather than innovation.
`
`III. THE ’211 PATENT
`A. Effective Filing Date of the ’211 Patent
`I understand that the ’211 patent issued from U.S. Application No.
`47.
`
`11/840,560, filed August 17, 2007.
`
`48.
`
`I understand that the ’560 application is a “continuation” of U.S.
`
`Application 10/714,849, filed November 18, 2003. I understand that the ’849
`
`application is a “continuation” of U.S. Application No. 09/558,210, filed April 26,
`
`2000. I understand that the ’210 application is a “continuation-in-part” of U.S.
`
`13
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`
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`Petitioner RPX – Ex. 1003
`
`
`
`
`
`Application No. 09/211,783, filed February 15, 2000. I understand that the ’783
`
`application is a “continuation-in-part” of U.S. Application No. 09/429,643, filed on
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`October 29, 1999. The ’783 and ’643 applications each claim priority under 35
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`U.S.C. 119(e) to Provisional Application Nos. 60/106,261, filed October 30, 1998
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`and 60/137,704, filed June 7, 1999.
`
`49.
`
`I understand that a “continuation-in-part” application is a patent
`
`application that is related to an earlier filed patent application, but which adds to,
`
`changes or deletes information relative to what was in the previous application.
`
`50.
`
`I understand that a “continuation-in-part” application may describe an
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`invention that is not described in the earlier application, and that this may result in
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`a patent claim being evaluated using the filing date of the continuation-in-part
`
`application, rather than the earlier related application.
`
`51.
`
`I understand that claims 1, 36, and