`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`APPLE INC.
`Petitioner,
`
`
`
`
`
`
`
`
`v.
`VIRNETX, INC. AND SCIENCE APPLICATIONS INTERNATIONAL
`CORPORATION,
`Patent Owners
`
`
`Patent No. 8,504,697
`Issued: August 6, 2013
`Filed: December 28, 2011
`Inventors: Victor Larson, et al.
`Title: SYSTEM AND METHOD EMPLOYING AN AGILE NETWORK
`PROTOCOL FOR SECURE COMMUNICATIONS USING SECURE DOMAIN
`NAMES
`
`
`____________________
`
`Inter Partes Review No. IPR2014-00238
`__________________________________________________________________
`
`
`Declaration of Michael Fratto Regarding
`
`U.S. Patent No. 8,504,697
`
`
`
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 1
`
`
`
`
`
`I, Michael Fratto, do hereby declare and state, that all statements made herein of
`
`my own knowledge are true and that all statements made on information and belief
`
`are believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: December 6, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Mike Fratto
`
`Page ii
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 2
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`A.
`Engagement .......................................................................................... 1
`B.
`Background and Qualifications ............................................................ 1
`C.
`Compensation and Prior Testimony ..................................................... 4
`D.
`Information Considered ........................................................................ 5
`LEGAL STANDARDS FOR PATENTABILITY ......................................... 6
`A. Anticipation .......................................................................................... 7
`B.
`Obviousness .......................................................................................... 8
`III. THE ’697 PATENT ...................................................................................... 14
`A.
`Effective Filing Date of the ’697 Patent ............................................ 14
`B.
`Prosecution History of The ’697 Patent ............................................. 17
`C.
`The Person of Ordinary Skill In The Art ........................................... 18
`D. Overview of the Claims of the ’697 Patent ........................................ 18
`E.
`Description of the Background Technology Relevant to the
`’697 Patent .......................................................................................... 18
`1.
`The Open Internet .................................................................... 18
`2.
`Domain Names and the Domain Name System (DNS) ........... 20
`a.
`The DNS System ........................................................... 21
`b.
`Domain Names and URIs .............................................. 23
`c.
`Domain Name Resolution ............................................. 25
`d.
`DNS SRV Records ........................................................ 32
`Encryption, Tunnels, and Data Security .................................. 32
`a.
`Encryption ...................................................................... 32
`b.
`Authentication ................................................................ 34
`c.
`IPsec – RFC 2401 .......................................................... 35
`d.
`Tunneling ....................................................................... 37
`VPNs ........................................................................................ 40
`Data Transmission over Telecommunications Lines ............... 41
`
`4.
`5.
`
`
`
`Page iii
`
`
`3.
`
`Petitioner Apple Inc. - Exhibit 1003, p. 3
`
`
`
`
`
`3.
`
`C.
`
`a. Multiplexing .................................................................. 42
`b.
`Data Transmission over Coaxial Cable ......................... 43
`c. Wireless Data Transmission .......................................... 45
`6. Multimedia Transmission over the Internet ............................. 47
`IV. GENERAL ISSUES RELATED TO MY PATENTABILITY
`ANALYSIS ................................................................................................... 50
`A.
`The Claims of the ’697 Patent I Am Addressing in this Report ........ 50
`B.
`Interpretation of Certain Claim Terms ............................................... 56
`1.
`Domain Name (Claims 1-11, 14-25, and 28-30) ..................... 57
`2.
`Secure Communication Link (Claims 1-11, 14-25, and
`28-30) ....................................................................................... 58
`Secure Communications Service (Claims 1-11, 14-25,
`and 28-30) ................................................................................ 61
`Intercepting a Request (Claims 1-11, 14-25, and 28-30)......... 63
`4.
`5. Modulation (Claims 6-7 and 20-21) ........................................ 67
`Prior Art References ........................................................................... 68
`1.
`Exhibit 1008 – Aventail Connect v3.01/2.51
`Administrator’s Guide (“Aventail”) ........................................ 68
`Exhibit 1007 – U.S. Patent 5,898,830 to Wesinger ................. 69
`2.
`Request for Comment (RFC) Publications .............................. 70
`3.
`PATENTABILITY ANALYSIS OF CLAIMS 1-11, 14-25, AND 28-
`30 OF THE ’697 PATENT ........................................................................... 72
`A. Wesinger ............................................................................................. 72
`1.
`Overview of Wesinger ............................................................. 73
`2.
`Comparison of Wesinger to Claims 1-11, 14-25, and 28-
`30 of the ’697 Patent ................................................................ 99
`a.
`Claims 1 and 16 ............................................................. 99
`i.
`Preamble ...............................................................99
`ii.
`Intercepting a Request to Look Up an IP
`Address ...............................................................100
`
`V.
`
`Page iv
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 4
`
`
`
`
`
`iii. Determining Whether the Second Device Is
`Available for a Secure Communications
`Service ................................................................102
`Initiating a Secure Communication Link ...........103
`iv.
`v. Wherein Video Data or Audio Data Is
`Transmitted Over the Secure
`Communication Link ..........................................104
`Claims 2 and 24 ........................................................... 105
`b.
`Claims 3 and 17 ........................................................... 106
`c.
`Claims 4 and 18 ........................................................... 107
`d.
`Claims 5 and 19 ........................................................... 108
`e.
`Claims 6 and 20 ........................................................... 110
`f.
`Claims 7 and 21 ........................................................... 111
`g.
`Claims 8 and 22 ........................................................... 113
`h.
`Claims 9 and 23 ........................................................... 113
`i.
`Claims 10 and 29 ......................................................... 114
`j.
`Claims 11 and 25 ......................................................... 115
`k.
`Claims 14 and 28 ......................................................... 116
`l.
`Claims 15 and 30 ......................................................... 117
`m.
`Aventail Connect v3.01/2.5 Administrator’s Guide ........................ 117
`1.
`Overview of Aventail ............................................................. 118
`2.
`Comparison of Aventail to Claims 1-11, 14-25, and 28-
`30 of the ’697 Patent .............................................................. 167
`a.
`Claims 1 and 16 ........................................................... 167
`i.
`Connecting Network Devices ............................167
`ii.
`Intercepting a Request to Look Up an IP
`Address ...............................................................169
`iii. Determining Whether the Second Device Is
`Available for a Secure Communications
`Service ................................................................171
`Initiating a Secure Communication Link ...........174
`iv.
`v. Wherein Video Data or Audio Data Is
`Transmitted Over the Secure
`Communication Link ..........................................175
`
`Page v
`
`
`B.
`
`Petitioner Apple Inc. - Exhibit 1003, p. 5
`
`
`
`
`
`Claims 2 and 24 ........................................................... 178
`b.
`Claims 3 and 17 ........................................................... 181
`c.
`Claims 4 and 18 ........................................................... 183
`d.
`Claims 5 and 19 ........................................................... 185
`e.
`Claims 6 and 20 ........................................................... 187
`f.
`Claims 7 and 21 ........................................................... 189
`g.
`Claims 8 and 22 ........................................................... 191
`h.
`Claims 9 and 23 ........................................................... 193
`i.
`Claims 10 and 29 ......................................................... 195
`j.
`Claims 11 and 25 ......................................................... 196
`k.
`Claims 14 and 28 ......................................................... 198
`l.
`Claims 15 and 30 ......................................................... 200
`m.
`A. Kiuchi et al., “C-HTTP - The Development of a Secure, Closed
`HTTP-based Network on the Internet” ............................................ 202
`1.
`Overview of Kiuchi ................................................................ 203
`2.
`Kiuchi Anticipates Claims 1-3, 8-11, 14-17, 22-25, and
`28-30 of the ’697 Patent ......................................................... 214
`a.
`Claims 1 and 16 ........................................................... 214
`b.
`Claims 2 and 24 ........................................................... 222
`c.
`Claims 3 and 17 ........................................................... 223
`d.
`Claims 8 and 22 ........................................................... 223
`e.
`Claims 9 and 23 ........................................................... 224
`f.
`Claims 10 and 29 ......................................................... 224
`g.
`Claims 11 and 25 ......................................................... 226
`h.
`Claims 14 and 28 ......................................................... 226
`i.
`Claims 15 and 30 ......................................................... 228
`VI. CONCLUSION ........................................................................................... 228
`VII. APPENDIX A: MATERIALS CONSIDERED BY MIKE FRATTO....... 229
`
`
`Page vi
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 6
`
`
`
`
`
`TABLE OF APPENDICES
`
`Appendix A:
`
`
`
`List of Materials Considered
`
`
`
`
`
`
`
`
`Page vii
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 7
`
`
`
`
`
`I.
`
`INTRODUCTION
`A. Engagement
`I have been retained by counsel for Apple Inc. as an expert witness in
`1.
`
`the above-captioned proceeding. I have been asked to provide my opinion about
`
`the state of the art of the technology described in U.S. Patent No. 8,504,697 (“the
`
`’697 patent”) and on the patentability of claims 1-11, 14-25, and 28-30 of the ’697
`
`patent. The following is my written report on these topics.
`
`Background and Qualifications
`
`B.
`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.
`
`4.
`
`I began working in the field of computer science in 1987. Between
`
`1987 and 1992, I was a consultant where I wrote software that would connect
`
`remote offices and collect/process data for input into other programs.
`
`5.
`
`Between 1994 and 1997, I was a freelance editor for Network
`
`Computing, where I covered remote access and telecommunications products and
`
`technologies. I held this position while earning my B.S. in Information Science
`
`and Technology from Syracuse University.
`
`6.
`
`Between June 1997 and June of 2004, I was a permanent employee of
`
`Network Computing, starting as an Associate Technology Editor and rising to
`
`Senior Technology Editor. In these capacities, I focused on network security
`
`
`
`Page 1
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 8
`
`
`
`
`
`solutions and products, which was a rapidly evolving field at that time. I have
`
`subsequently held a number of other positions with Network Computing, as well as
`
`affiliated publications. For example, from July 2004 to April 2006, I served as
`
`Editor of Secure Enterprise Magazine – which focused on security solutions
`
`specific to enterprise systems. After April 2006, I returned to Network Computing,
`
`where I served in a progression of senior positions, ultimately serving as Editor of
`
`Network Computing between August 2009 and October of 2012.
`
`7.
`
`I am presently a Senior Analyst with Current Analysis. In this respect
`
`I manage the Enterprise Networking practice within the business and technology
`
`and software group. I also provide competitive analysis on trends and changes in
`
`the enterprise networking markets as well as consult with network equipment
`
`vendors on product messaging, marketing, and outreach.
`
`8.
`
`I presently serve as an adjunct faculty member of School of
`
`Information Studies at Syracuse University.
`
`9.
`
`I have been studying, evaluating, testing and describing networking,
`
`networking security and related technologies for more than 15 years. Since well
`
`before 1999, I have had an extensive background and experience in network
`
`systems, software and related technologies, with a particular focus on network
`
`security.
`
`
`
`Page 2
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 9
`
`
`
`
`
`10.
`
`I also have extensive hands-on experience with wide range of
`
`networking and networking security products developed and sold in the 1993 to
`
`2002 time frame. This came from my various positions with Network Computing,
`
`where I reviewed, tested and described these products in a technical publication
`
`devoted to this field. I also wrote articles about network infrastructure, data center,
`
`and network access control items that were published by Network Computing. I
`
`also am very familiar with Internet standards governing networking and security,
`
`which I discuss below.
`
`11. A substantial amount of my extensive experience with networking and
`
`security systems used in the late 1990s came from my work in reviewing these
`
`products for Network Computing. When I performed a typical review of a new
`
`product, I would first define a “problem set” the product was designed to address.
`
`I would interview IT administrators and executives and speak with the developers
`
`of the product. I also would study the standards relevant to the product or its
`
`implementation, and would evaluate the technical documentation accompanying
`
`the product. I would then create a set of comparative measures to assess the ability
`
`of the product to execute. I would then test the product under a variety of
`
`situations designed to evaluate these comparative measures. To do this, I would
`
`set up a test network, verify its operation, conduct the tests, and ensure the results
`
`
`
`Page 3
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 10
`
`
`
`
`
`were accurate. I would also often compare the product to other products in the
`
`same class or category.
`
`12.
`
`In the 1997 to 2000 time frame, I was particularly focused on remote
`
`access products including modems, ISDN, and virtual private networking products,
`
`technologies, and standards as well as network and host-based firewalls.
`
`13.
`
`I am the author of several books and publications devoted to secure
`
`networking technologies. I also have taught a number of courses on systems and
`
`technologies used in networking security, particularly focused on Internet security
`
`solutions. These books and courses are listed on my C.V. (Ex. 1004).
`
`C. Compensation and Prior Testimony
`I am being compensated at a rate of $250 per hour for my study and
`14.
`
`testimony in this matter. I am also being reimbursed for reasonable and customary
`
`expenses associated with my work and testimony in this investigation. My
`
`compensation is not contingent on the outcome of this matter or the specifics of my
`
`testimony.
`
`15.
`
`16.
`
`I have never testified in Federal District Court.
`
`I have provided declarations that were submitted in inter partes
`
`reexamination proceedings based on patents owned by Patent Owner. These
`
`proceedings include Control No. 95/001,682, 95/001,679, 95/001,788 and
`
`95/001,789.
`
`
`
`Page 4
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 11
`
`
`
`
`
`17.
`
`I have provided declarations that were submitted in inter partes
`
`review proceedings based on patents owned by Patent Owner. These proceedings
`
`include IPR2013-00348, -00349, -00354, -00393, -00394, -00397, and -00398 filed
`
`by Petitioner Apple, as well as IPR2014-00171, -00172, -00172, -00174, -00175, -
`
`00176, and -00177 filed by another petitioner.
`
`Information Considered
`
`D.
`18. My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`my opinions, I have considered the materials I identify in this report and those
`
`listed in Appendix A.
`
`19.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Patent Owner. I may also consider additional
`
`documents and information in forming any necessary opinions — including
`
`documents that may not yet have been provided to me.
`
`20. My analysis of the materials produced in this investigation is ongoing
`
`and I will continue to review any new material as it is provided. This report
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`
`
`
`
`Page 5
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 12
`
`
`
`
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`In expressing my opinions and considering the subject matter of the
`21.
`
`claims of the ’697 patent, I am relying upon certain basic legal principles that
`
`counsel has explained to me.
`
`22. First, I understand that for an invention claimed in a patent to be
`
`found patentable, it must be, among other things, new and not obvious from what
`
`was known before the invention was made.
`
`23.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and
`
`generally includes patents and printed publications (e.g., books, journal
`
`publications, articles on websites, product manuals, etc.).
`
`24.
`
`I understand in this proceeding Apple has the burden of proving that
`
`the ’697 patent are anticipated by or obvious from the prior art by a preponderance
`
`of the evidence. I understand that “a preponderance of the evidence” is evidence
`
`sufficient to show that a fact is more likely true than it is not.
`
`25.
`
`I understand that in this proceeding, the claims must be given their
`
`broadest reasonable interpretation consistent with the specification. The claims
`
`after being construed in this manner are then to be compared to the information in
`
`the prior art.
`
`
`
`Page 6
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 13
`
`
`
`
`
`26.
`
`I understand that in this proceeding, the information that may be
`
`evaluated is limited to patents and printed publications. My analysis below
`
`compares the claims to patents and printed publications that are prior art to the
`
`claims.
`
`27.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
`
`claim. Second, the prior art can be shown to have made the claim “obvious” to a
`
`person of ordinary skill in the art. My understanding of the two legal standards is
`
`set forth below.
`
`A. Anticipation
`I understand that the following standards govern the determination of
`28.
`
`whether a patent claim is “anticipated” by the prior art.
`
`29.
`
`I have applied these standards in my evaluation of whether claims 1-
`
`11, 14-25 and 28-30 of the ’697 patent would have been anticipated by the prior
`
`art.
`
`30.
`
`I understand that the “prior art” includes patents and printed
`
`publications that existed before the earliest filing date (the “effective filing date”)
`
`of the claim in the patent. I also understand that a patent will be prior art if it was
`
`filed before the effective filing date of the claimed invention, while a printed
`
`publication will be prior art if it was publicly available before that date.
`
`
`
`Page 7
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 14
`
`
`
`
`
`31.
`
`I understand that, for a patent claim to be “anticipated” by the prior
`
`art, each and every requirement of the claim must be found, expressly or
`
`inherently, in a single prior art reference as recited in the claim. I understand that
`
`claim limitations that are not expressly described in a prior art reference may still
`
`be there if they are “inherent” to the thing or process being described in the prior
`
`art. For example, an indication in a prior art reference that a particular process
`
`complies with a published standard would indicate that the process must inherently
`
`perform certain steps or use certain data structures that are necessary to comply
`
`with the published standard.
`
`32.
`
`I understand that it is acceptable to consider evidence other the
`
`information in a particular prior art document to determine if a feature is
`
`necessarily present in or inherently described by that reference.
`
`B. Obviousness
`I understand that a claimed invention is not patentable if it would have
`33.
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made.
`
`34.
`
`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
`
`
`
`Page 8
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 15
`
`
`
`
`
`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.
`
`35.
`
`I understand that the following standards govern the determination of
`
`whether a claim in a patent is obvious. I have applied these standards in my
`
`evaluation of whether claims 1-11, 14-25 and 28-30 of the ’697 patent would have
`
`been considered obvious in February of 2000.
`
`36.
`
`I understand that to find a claim in a patent obvious, one must make
`
`certain findings regarding the claimed invention and the prior art. Specifically, I
`
`understand that the obviousness question requires consideration of four factors
`
`(although not necessarily in the following order):
`
`• The scope and content of the prior art;
`
`• The differences between the prior art and the claims at issue;
`
`• The knowledge of a person of ordinary skill in the pertinent art; and
`
`• Whatever objective factors indicating obviousness or non-obviousness
`may be present in any particular case.
`
`37.
`
` 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
`
`skill in the relevant art as of the effective filing date of the patent claim.
`
`
`
`Page 9
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 16
`
`
`
`
`
`38.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness may include: commercial success of products covered by the patent
`
`claims; a long-felt need for the invention; failed attempts by others to make the
`
`invention; copying of the invention by others in the field; unexpected results
`
`achieved by the invention; praise of the invention by the infringer or others in the
`
`field; the taking of licenses under the patent by others; expressions of surprise by
`
`experts and those skilled in the art at the making of the invention; and the patentee
`
`proceeded contrary to the accepted wisdom of the prior art.
`
`39.
`
`I understand the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`I also understand that an example of a solution in one field of endeavor may make
`
`that solution obvious in another related field. I also understand that market
`
`demands or design considerations may prompt variations of a prior art system or
`
`process, either in the same field or a different one, and that these variations will
`
`ordinarily be considered obvious variations of what has been described in the prior
`
`art.
`
`40.
`
`I also understand that if a person of ordinary skill can implement a
`
`predictable variation, that variation would have been considered obvious. I
`
`understand that for similar reasons, if a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`
`
`Page 10
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 17
`
`
`
`
`
`improve similar devices in the same way, using that technique to improve the other
`
`device would have been obvious unless its actual application yields unexpected
`
`results or challenges in implementation.
`
`41.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, but
`
`instead can take account of the “ordinary innovation” and experimentation that
`
`does no more than yield predictable results, which are inferences and creative steps
`
`that a person of ordinary skill in the art would employ.
`
`42.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design
`
`community or present in the marketplace; and the background knowledge
`
`possessed by a person having ordinary skill in the art. I understand that all these
`
`issues may be considered to determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.
`
`43.
`
`I understand that the obviousness analysis cannot be confined by a
`
`formalistic conception of the words “teaching, suggestion, and motivation.” I
`
`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
`
`an obviousness analysis as a precondition for finding obviousness. It is my
`
`
`
`Page 11
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 18
`
`
`
`
`
`understanding that KSR confirms that any motivation that would have been known
`
`to a person of skill in the art, including common sense, or derived from the nature
`
`of the problem to be solved, is sufficient to explain why references would have
`
`been combined.
`
`44.
`
`I understand that a person of ordinary skill attempting to solve a
`
`problem will not be led only to those elements of prior art designed to solve the
`
`same problem. I understand that under the KSR standard, steps suggested by
`
`common sense are important and should be considered. Common sense teaches
`
`that familiar items may have obvious uses beyond the particular application being
`
`described in a reference, that if something can be done once it is obvious to do it
`
`multiple times, and in many cases a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
`
`considered can be directed to any need or problem known in the field of endeavor
`
`in February of 2000 and can provide a reason for combining the elements of the
`
`prior art in the manner claimed. In other words, the prior art does not need to be
`
`directed towards solving the same problem that is addressed in the patent. Further,
`
`the individual prior art references themselves need not all be directed towards
`
`solving the same problem.
`
`45.
`
`I understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`
`
`Page 12
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 19
`
`
`
`
`
`more prior art references discourages or lead away from the line of inquiry
`
`disclosed in the reference(s). A reference does not “teach away” from an invention
`
`simply because the reference suggests that another embodiment of the invention is
`
`better or preferred. My understanding of the doctrine of teaching away requires a
`
`clear indication that the combination should not be attempted (e.g., because it
`
`would not work or explicit statements saying the combination should not be made.
`
`46.
`
`I understand that a person of ordinary skill is also a person of ordinary
`
`creativity.
`
`47.
`
`I further understand that in many fields, it may be that there is little
`
`discussion of obvious techniques or combination, and it often may be the case that
`
`market demand, rather than scientific literature or knowledge, will drive design
`
`trends. When there is such a design need or market pressure to solve a problem
`
`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
`
`grasp. If this leads to the anticipated success, it is likely the product not of
`
`innovation but of ordinary skill and common sense. In that instance the fact that a
`
`combination was obvious to try might show that it was obvious. The fact that a
`
`particular combination of prior art elements was “obvious to try” may indicate that
`
`the combination was obvious even if no one attempted the combination. If the
`
`combination was obvious to try (regardless of whether it was actually tried) or
`
`
`
`Page 13
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 20
`
`
`
`
`
`leads to anticipated success, then it is likely the result of ordinary skill and
`
`common sense rather than innovation.
`
`III. THE ’697 PATENT
`A. Effective Filing Date of the ’697 Patent
`I understand that the ’697 patent issued from U.S. Application No.
`48.
`
`13/339,257, filed December 28, 2011.
`
`49.
`
`I understand that the ’257 application is a continuation of U.S.
`
`Application No. 13/049,552, filed March 16, 2011. I understand that the ’552
`
`application became U.S. Patent No. 8,572,247. I understand that the ’552
`
`application is a continuation of U.S. Application No. 11/840,560, filed August 17,
`
`2007. I understand that the ’560 application became U.S. Patent No. 7,921,211.
`
`The ’560 application is a continuation of U.S. Application No. 10/714,849, filed
`
`November 18, 2003. I understand that the ’849 application became U.S. Patent
`
`No. 7,418,504.
`
`50.
`
`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. Application No. 09/504,783, 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 October 29, 1999. The ’783
`
`and ’643 applications each claim priority under 35 U.S.C. 119(e) to Provisional
`
`
`
`Page 14
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, p. 21
`
`
`
`
`
`Application Nos. 60/106,261, filed October 30, 1998 and 60/137,704, filed June 7,
`
`1999.
`
`51.
`
`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.
`
`52.
`
`I und