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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`RPX CORPORATION.
`Petitioner,
`
`
`
`
`
`
`
`
`v.
`VIRNETX, INC. AND SCIENCE APPLICATIONS INTERNATIONAL
`CORPORATION,
`Patent Owners
`
`Patent No. 7,418,504
`Issued: Aug. 26, 2008
`Filed: Nov. 18, 2003
`Inventors: Victor Larson, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`USING SECURE DOMAIN NAMES
`
`
`____________________
`
`Inter Partes Review No. IPR2014-00176
`__________________________________________________________________
`
`
`Declaration of Michael Fratto Regarding
`
`U.S. Patent No. 7,418,504
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`
`
`
`
`
`1, Michael Fratto, do hereby declare and state, that all statements made herein of my own lmowledge 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
`ike Fratto
`“0‘70 g1
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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 ’504 PATENT ...................................................................................... 13
`A.
`Effective Filing Date of the ’504 Patent ............................................ 13
`B.
`Prosecution History Of The ’504 Patent ............................................ 16
`C.
`The Person Of Ordinary Skill In The Art ........................................... 16
`D. Overview of the Claims of the ’504 Patent ........................................ 17
`E.
`Description of the Background Technology Relevant to the
`’504 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 .................................. 30
`d.
`Encryption ...................................................................... 30
`e.
`Authentication ................................................................ 32
`f.
`IPSec – RFC 2401 ......................................................... 36
`g.
`Tunneling ....................................................................... 37
`VPNs ........................................................................................ 40
`4.
`Connection Indicators .............................................................. 41
`5.
`IV. GENERAL ISSUES RELATED TO MY PATENTABILITY
`ANALYSIS ................................................................................................... 45
`
`3.
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`Page iii
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`V.
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`
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`A.
`B.
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`C.
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`The Claims of the ’504 Patent I Am Addressing in this Report ........ 45
`Interpretation of Certain Claim Terms ............................................... 57
`6.
`Domain Name (Claims 1-3, 5-8 and 14-60) ............................ 58
`7.
`Domain Name Service System (Claims 1-3, 5-8 and 14-
`60) ............................................................................................ 59
`Indication (Claims 1-3, 5-8, and 14-60) .................................. 61
`8.
`Secure Communication Link (Claims 1-3, 5-8 and 14-60) ..... 62
`9.
`Secure Name (Claims 3, 24, 25, 48, and 49) ........................... 65
`10.
`Prior Art References ........................................................................... 66
`11. Exhibit 1007 – Aventail Connect v3.01/2.51
`Administrator’s Guide (“Aventail”) ........................................ 66
`12. Exhibit 1008 – U.S. Patent 6,557,037 to Provino .................... 68
`13. Exhibit 1009 – U.S. Patent 6,496,867 to Beser ....................... 68
`14. Request for Comment (RFC) Publications .............................. 68
`PATENTABILITY ANALYSIS OF CLAIMS 1-3, 5-8, AND 14-60
`OF THE ’504 PATENT ................................................................................ 71
`A. Aventail Connect v3.01/2.5 Administrator’s Guide .......................... 71
`15. Overview of Aventail ............................................................... 71
`16. Comparison of Aventail to Claims 1-3, 5-8, and 14-60 of
`the ’504 Patent ....................................................................... 119
`a.
`Claims 1, 36 and 60 ..................................................... 119
`1.
`Connection to Communication Network ...........119
`2.
`Storage of Plurality of Domain Names and
`Corresponding Network Addresses ....................122
`Receiving Query For a Network Address ..........124
`Indication that the Domain Name Service
`System Supports Establishing a Secure
`Communication Link ..........................................125
`Claims 2 and 37 ........................................................... 129
`Claim 3 ......................................................................... 131
`Claim 5 ......................................................................... 133
`Claim 6 ......................................................................... 134
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`b.
`c.
`d.
`e.
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`3.
`4.
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`Page iv
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`Claim 7 ......................................................................... 135
`f.
`Claim 8 ......................................................................... 137
`g.
`Claims 14 and 38 ......................................................... 138
`h.
`Claims 15 and 39 ......................................................... 139
`i.
`Claims 16 and 40 ......................................................... 141
`j.
`Claims 17 and 41 ......................................................... 145
`k.
`Claims 18 and 42 ......................................................... 147
`l.
`Claims 19 and 43 ......................................................... 148
`m.
`Claims 20 and 44 ......................................................... 150
`n.
`Claims 21 and 45 ......................................................... 151
`o.
`Claims 22 and 46 ......................................................... 152
`p.
`Claims 23 and 47 ......................................................... 153
`q.
`Claims 24 and 48 ......................................................... 154
`r.
`Claims 25 and 49 ......................................................... 156
`s.
`Claims 26 and 50 ......................................................... 156
`t.
`Claims 27 and 51 ......................................................... 157
`u.
`Claims 28 and 52 ......................................................... 159
`v.
`Claims 29 and 53 ......................................................... 160
`w.
`Claims 30 and 54 ......................................................... 161
`x.
`Claims 31 and 55 ......................................................... 163
`y.
`Claims 32 and 56 ......................................................... 165
`z.
`aa. Claims 33 and 57 ......................................................... 167
`bb. Claims 34 and 58 ......................................................... 168
`cc. Claims 35 and 59 ......................................................... 169
`17. Aventail in view of Kiuchi Renders Obvious Claim 3 .................... 171
`dd. Claim 3 ......................................................................... 175
`U.S. Patent No. 6,557,037 to Provino .............................................. 179
`18. Overview of Provino .............................................................. 179
`
`B.
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`3.
`4.
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`19. Comparison of Provino to Claims 1-3, 5-8, and 14-60 of
`the ’504 Patent ....................................................................... 201
`a.
`Claim 1 ......................................................................... 201
`1.
`Preamble .............................................................201
`2.
`Connection to a Communication Network
`and Storage of Plurality of Domain Names
`and Corresponding Network Addresses .............202
`Receiving query for a network address ..............203
`Indication that the domain name service
`system supports establishing a secure
`communication link ............................................204
`Claims 2 and 37 ........................................................... 205
`Claim 3 ......................................................................... 206
`Claim 5 ......................................................................... 207
`Claim 6 ......................................................................... 207
`Claim 7 ......................................................................... 207
`Claim 8 ......................................................................... 208
`Claims 14 and 38 ......................................................... 208
`Claims 15 and 39 ......................................................... 209
`Claims 16 and 40 ......................................................... 210
`Claims 17 and 41 ......................................................... 211
`Claims 18 and 42 ......................................................... 213
`Claims 19 and 43 ......................................................... 213
`Claims 20 and 44 ......................................................... 214
`Claims 21 and 45 ......................................................... 215
`Claims 22 and 46 ......................................................... 215
`Claims 23 and 47 ......................................................... 216
`Claims 24 and 48 ......................................................... 217
`Claims 25 and 49 ......................................................... 217
`Claims 26 and 50 ......................................................... 219
`Claims 27 and 51 ......................................................... 219
`Claims 28 and 52 ......................................................... 220
`
`b.
`c.
`d.
`e.
`f.
`g.
`h.
`i.
`j.
`k.
`l.
`m.
`n.
`o.
`p.
`q.
`r.
`s.
`t.
`u.
`v.
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`Page vi
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`Claim 29 and 53 ........................................................... 220
`w.
`Claim 30 and 54 ........................................................... 222
`x.
`Claim 31 and 55 ........................................................... 224
`y.
`Claim 32 and 56 ........................................................... 225
`z.
`aa. Claims 33 and 57 ......................................................... 226
`bb. Claims 34 and 58 ......................................................... 226
`cc. Claims 35 and 59 ......................................................... 227
`CONCLUSION ................................................................................ 229
`VI. APPENDIX A: MATERIALS CONSIDERED BY MIKE FRATTO....... 230
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`Page vii
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`TABLE OF APPENDICES
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`Appendix A:
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`List of Materials Considered
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`Page viii
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`I.
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`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. 7,418,504 (“the
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`’504 patent”) and on the patentability of claims 1-3, 5-8 and 14-60 of the ’504
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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.
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`3.
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`I received a Bachelor’s of Science Degree from Syracuse University
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`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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`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.
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`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.
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`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.
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`I also have extensive hands-on experience with wide range of
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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.
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`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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`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/’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.
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`Information Considered
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`D.
`17. My opinions are based on my years of education, research and
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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.
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`claims of the ’504 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 ’504 patent are anticipated by or obvious from the prior art by a preponderance
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`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.
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`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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`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.
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`I have applied these standards in my evaluation of whether claims 1-3,
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`5-8 and 14-60 of the ’504 patent would have been anticipated by the prior art.
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`29.
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`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.
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`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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`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.
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`I understand that the obviousness standard is defined in the patent
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`statute (35 U.S.C. § 103(a)) as follows:
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`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.
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`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 ’504 patent would have
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`been considered obvious in February of 2000.
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`35.
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`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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`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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`1.
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`2.
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`3.
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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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`4. 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
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`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.
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`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.
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`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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`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.
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`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.
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`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.
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`I understand that sometimes it will be necessary to look to interrelated
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`teachings of multiple patents; the effects of demands known to the design
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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.
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`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.
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`Teleflex, Inc. where the Court rejected the previous requirement of a “teaching,
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`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.
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`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.
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`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
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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
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`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.
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`III. THE ’504 PATENT
`A. Effective Filing Date of the ’504 Patent
`I understand that the ’504 patent issued from U.S. Application No.
`47.
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`10/714,849, filed November 18, 2003.
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`48.
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`I understand that the ’849 application is a “continuation” of U.S.
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`Application No. 09/558,210, filed April 26, 2000. I understand that the ’210
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`application is a “continuation-in-part” of U.S. Application No. 09/504,783, filed
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`February 15, 2000. I understand that the ’783 application is a “continuation-in-
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`part” of U.S. Application No. 09/429,643, filed on October 29, 1999. The ’783
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`and ’643 applications each claim priority under 35 U.S.C. 119(e) to Provisional
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`Application Nos. 60/106,261, filed October 30, 1998 and 60/137,704, filed June 7,
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`1999.
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`49.
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`I understand that a “continuation-in-part” application is a patent
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`application that is related to an earlier filed patent application, but which adds to,
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`changes or deletes information relative to what was in the previous application.
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`50.
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`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
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`application, rather than the earlier related application.
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`51.
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`I understand that claims 1, 36, and 60 of the ’504 patent are
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`independent claims. I also understand that claims 2, 5-6, 14-23, 26-28, and 32-35
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`depend from claim 1, and that claims 37-47, 49-52, and 57-59 depend from claim
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`36.
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`52.
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`I understand that a dependent claim incorporates all of the
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`requirements of the independent claim from which it depends. So, in the case of
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`the ’504 patent, claims 2, 5-6, 14-23, 26-28, and 32-35 and claims 37-47, 49-52,
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`and 57-59 cannot enjoy an effective filing date earlier than that of claims 1 and 36,
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`respectively, from which