UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SAMSUNG ELECTRONICS CO. LTD.; SAMSUNG ELECTRONICS
`AMERICA, INC.; SAMSUNG TELECOMMUNICATIONS AMERICA, LLC;
`AND SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`Petitioner
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner
`___________
`
`Case IPR2014-00514
`Patent 8,023,580
`___________
`
`
`
`
`
`DECLARATION OF DAVID GOODMAN
`
`IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,023,580
`
`
`
`
`
`
`
`Exhibit 1019 01/76
`
`

`

`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`EXPERT QUALIFICATIONS AND CREDENTIALS .................................. 1
`
`III. BASIS FOR OPINIONS AND MATERIALS REVIEWED .......................... 5
`
`IV. SUMMARY OF MY OPINIONS ................................................................... 6
`
`V.
`
`LEGAL PRINCIPLES ..................................................................................... 7
`
`A. Anticipation ........................................................................................... 7
`
`B.
`
`C.
`
`Obviousness ......................................................................................... 10
`
`Claim Interpretation in Inter Partes Review ....................................... 16
`
`VI. THE TECHNOLOGY DESCRIBED IN THE `580 PATENT ..................... 17
`
`VII. PROSECUTION HISTORY OF THE `580 PATENT .................................. 19
`
`VIII. PERSON OF ORDINARY SKILL IN THE ART ........................................ 20
`
`IX. CLAIM CONSTRUCTION .......................................................................... 20
`
`A.
`
`B.
`
`C.
`
`D.
`
`“At Least Two Types Of Modulation Methods” (Claims 1 and 58) ... 20
`
`“First Modulation Method” (Claims 1, 2, 13, 19, 21, 22, 49, 54,
`58, 59, 70, 76, 78, 79) And “Second Modulation Method” (Claims
`1, 13, 20, 22, 49, 54, 58, 70, 77, 79) ................................................... 22
`
`“Master” (Claims 1, 2, 10, 11, 12, 49, 54, 58, 59, 66, 68, 69) ............ 23
`
`“Slave” (Claims 1,2, 10, 11, 58, 59, 66, 68) ....................................... 23
`
`X.
`
`The Prior Art .................................................................................................. 24
`
`A.
`
`Claims 1, 2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59, 61, 62, 66, 70, &
`76-79 Are Anticipated Or Made Obvious By The Draft 802.11
`Standard ............................................................................................... 24
`
`1.
`
`Overview Of The Draft 802.11 Standard .................................. 24
`
`DOCSLA-118537v1
`
`Exhibit 1019 02/76
`
`

`

`
`
`
`
`
`
`
`2.
`
`3.
`
`4.
`
`The Draft 802.11 Standard Anticipates Or Renders Obvious
`Claims 1, 2, 4-5, 10, 13, 19-22.................................................. 28
`
`The Draft 802.11 Standard Anticipates Or Renders Obvious
`Claims 49, 52-54 & 57 .............................................................. 40
`
`The Draft 802.11 Standard Anticipates Or Renders Obvious
`Claims 58-59, 61, 62, 66, 70 & 76-79 ...................................... 45
`
`B.
`
`Claims 1-2, 4-5, 10, 13, 19-22, 44, 49, 54, 58-59, 61-62, 66, 70 &
`76-79 Are Rendered Obvious Under 35 U.S.C. § 103 By The
`Draft 802.11 Standard In View Of Boer ............................................. 54
`
`1.
`
`2.
`
`Overview of Boer ...................................................................... 55
`
`PPM/DQPSK Is A Different “Type” Of Modulation Than
`DBPSK ...................................................................................... 59
`
`3. Motivation To Combine ............................................................ 62
`
`ii
`
`DOCSLA-118537v1
`
`Exhibit 1019 03/76
`
`

`

`
`
`I, David Goodman, declare:
`
`I.
`
`INTRODUCTION
` My name is David J. Goodman. I am currently a Professor Emeritus
`1.
`
`in the Department of Electrical and Computer Engineering of New York
`
`University (NYU).
`
`
`2.
`
`I have been retained by Samsung Electronics Co. Ltd., Samsung
`
`Electronics America, Inc., Samsung Telecommunications America, LLC, and
`
`Samsung Austin Semiconductor, LLC (“Petitioners”) to provide my expert
`
`opinions regarding U.S. Patent No. 8,023,580 (“the `580 patent”). More
`
`specifically, I have been asked to give my opinion about the meanings of certain
`
`terms of the `580 Patent claims, and to compare the `580 Patent claims to prior
`
`patents and publications. I submit this declaration in support of Petitioner’s
`
`petition for inter partes review of the `580 Patent.
`
`
`3.
`
`I am being compensated for my work in this matter. My
`
`compensation in no way depends upon the outcome of this proceeding.
`
`II. EXPERT QUALIFICATIONS AND CREDENTIALS
` My qualifications are set forth in my curriculum vitae, a copy of
`4.
`
`which is attached as an Appendix A to this declaration, including lists of lists of
`
`my journal publications, books I have authored or edited, and my patents
`
`
`5.
`
`I received a Bachelor’s degree at Rensselaer Polytechnic Institute in
`
`1960, a Master’s degree at New York University in 1962, and a Ph.D. at Imperial
`
`College, University of London in 1967, all in electrical engineering.
`
`DOCSLA-118537v1
`
`Exhibit 1019 04/76
`
`

`

`
`
`
`6.
`
`From 1967 to 1988, I was at Bell Laboratories, where I eventually
`
`became head of the Radio Research Department. In 1988, I moved to Rutgers, the
`
`State University of New Jersey where I was a Professor of Electrical and Computer
`
`Engineering and Chairman of the Department of Electrical and Computer
`
`Engineering. In 1989, I founded the Wireless Information Network Laboratory
`
`(WINLAB) at Rutgers University. WINLAB was the first center of excellence at a
`
`United States university focused on wireless telecommunications. In 1991,
`
`WINLAB was designated the National Science Foundation Industry/University
`
`Cooperative Research Center for Wireless Information Networks.
`
`7.
`
`
`
`In 1999, I joined NYU as Professor of Electrical and Computer
`
`Engineering and Head of the Department of Electrical and Computer Engineering.
`
`I was also Director of the Wireless Internet Centre for Advanced Technology
`
`(WICAT), with sites at NYU, University of Virginia, Auburn University, and
`
`Virginia Tech. WICAT was a National Science Foundation Industry/University
`
`Cooperative Research Center. In May 2008, I retired from my position of Professor
`
`of Electrical and Computer Engineering at NYU and was awarded my present title
`
`of Professor Emeritus.
`
`8.
`
`In 1995, I was a Research Associate at the Program on Information
`
`Resources Policy at Harvard University. In 1997, I was Chairman of the National
`
`Research Council Committee studying “The Evolution of Untethered
`
`Communications.” In 2006 and 2007, I was a Program Director at the National
`
`Science Foundation. From 2011 until October 2013, I was a member of the
`
`
`
`2
`
`DOCSLA-118537v1
`
`Exhibit 1019 05/76
`
`

`

`
`
`National Research Council Committee studying “Management of Intellectual
`
`Property in Standard-Setting Processes.”
`
`9.
`
`I have been an expert in the field of wireless telecommunications
`
`since 1979 when I began publishing papers and giving talks and lectures on the
`
`technology. I have extensive experience performing and managing research in
`
`telecommunications and digital signal processing. My research in wireless
`
`telecommunications has produced innovations covering frequency hopping, packet
`
`transmission and switching, network architecture, mobility management, and radio
`
`resources management.
`
`10.
`
`
`
`In the 1980s, I performed independent research and directed research
`
`in packet communication networks at Bell Labs.
` From the 1980s onward, I performed and directed a considerable body
`11.
`
`of research into communication networks in general and wireless communication
`
`networks in particular. The results of this research are documented in a large
`
`number of published papers.
`
` Some of the salient aspects of this research are invention of the Packet
`12.
`
`Reservation Multiple Access Media Access Control protocol, analysis of GPRS,
`
`the packet network overlay to the GSM cellular system, invention of a cellular
`
`packet switch, and new techniques for radio resource management in wireless data
`
`networks.
`
`13.
`
`In 2000 and 2001, I supervised the Master of Science research of
`
`Richard Lavery at NYU. This research is documented in the thesis “Throughput
`
`Optimization For Wireless Data Transmission” submitted by Lavery in 2001.
`
`
`
`3
`
`DOCSLA-118537v1
`
`Exhibit 1019 06/76
`
`

`

`
`
`
`
` Lavery describes a communication system capable of operating at 14.
`
`different transmission speeds, with the speed adapted to changing channel quality.
`
`Each transmission speed was characterized by an error correcting code and a
`
`packet size.
`
` Subsequently, Lavery and I collaborated with a Professor Goldsmith
`15.
`
`at Stanford and one of her students to extend Lavery’s results to systems capable of
`
`communication with different types of modulation, a subject previously studied by
`
`Professor Goldsmith.
`
`16.
`
`I have been acquainted with Bluetooth since late 1998, when I was
`
`Director of Rutgers University WINLAB and Jaap Haartsen, inventor of Bluetooth,
`
`visited and gave a talk on a preliminary version of the Bluetooth specification.
`
`Subsequently a WINLAB student and an NYU student that I supervised wrote
`
`Master of Science dissertations on analyses of the published Bluetooth
`
`specification.
`
`17.
`
`In 1989, I was one of the first professors to teach a university course
`
`in wireless mobile telecommunications and I continued to teach the subject to
`
`university students until my retirement in 2008. In the 1990s, I presented an in-
`
`house three-day short course to staff of many mobile telephone operating
`
`companies. I have lectured and published widely on the subject of wireless
`
`telecommunications. I have also consulted for many corporations in this field,
`
`including: Ericsson, Motorola, Lucent Technologies, and Nortel Networks.
`
`
`18.
`
`I have been elected a Member of the National Academy of
`
`Engineering, a Foreign Member of The Royal Academy of Engineering, a Fellow
`
`
`
`4
`
`DOCSLA-118537v1
`
`Exhibit 1019 07/76
`
`

`

`
`
`of the Institute of Electrical and Electronics Engineers (IEEE), and a Fellow of the
`
`Institution of Electrical Engineers. In 1997, I received the ACM/SIGMOBILE
`
`Award for “Outstanding Contributions to Research on Mobility of Systems Users,
`
`Data, and Computing.” In 1999, I won the RCR Gold Award for the best
`
`presentation at the Conference on Third Generation Wireless Communications.
`
`Three of my papers on wireless telecommunications have been cited as Paper of
`
`the Year by IEEE journals, and in 2003, I received the IEEE Avant Garde award
`
`for my pioneering work in wireless telecommunications.
`
`19.
`
`I am author of the book “Wireless Personal Communications
`
`Systems,” published in 1997 by Addison Wesley, co-author, with Roy Yates, of
`
`“Probability and Stochastic Processes A Friendly Introduction for Electrical and
`
`Computer Engineers,” third edition published in 2014 by Wiley, and co-author
`
`with Hyung G. Myung of “Single Carrier FDMA: A New Air Interface for Long
`
`Term Evolution” published in 2 by Wiley. I am co-editor of five other books on
`
`wireless telecommunications. I have been awarded eight United States patents and
`
`my publications include approximately 100 refereed papers.
`
`III. BASIS FOR OPINIONS AND MATERIALS REVIEWED
` The opinions set forth in my declaration are based on my personal
`20.
`
`knowledge gained from my education, professional experience, and on the review
`
`of the documents and information described in this declaration.
`
`21.
`
`In preparation of this declaration, I have studied
`
`a. U.S. Patent No. 8,023,580 (Ex. 1001);
`
`
`
`5
`
`DOCSLA-118537v1
`
`Exhibit 1019 08/76
`
`

`

`
`
`b. File History of U.S. Patent No. 8,023,580 and the patents from which
`
`the `580 patent claims priority, as well as the child patent;
`c. U.S. Patent No. 5,706,428 to Boer et al. “Boer;”
`
`d. P802.11 Draft Wireless LAN Medium Access Control (MAC) and
`
`Physical Layer (PHY) Specification, 23 May 1996;
`e. IEEE Std 802.11-1997( Wireless LAN Medium Access Control (MAC)
`
`and Physical Layer (PHY) Specifications), IEEE Standards Board,
`
`Approved Jun. 26, 1997;
`f. Upender, “Communication Protocols for Embedded Systems,”
`
`Embedded Systems Programming, Vol. 7, Issue 11, November 1994.
`
`g. Draft Joint Claim Construction Statement, Rembrandt Wireless
`
`Technologies, LP v. Samsung Electronics Co. Ltd, et al, No. 2:13-cv-
`
`00213 (E.D. Tex. 2013);
`
`h. “The IEEE Standard Dictionary of Electrical and Electronics Terms,”
`6th Ed., 1996, p. 662;
`i. “Dictionary Of Communications Technology,” 1995, pp. 259, 404.
`
`IV. SUMMARY OF MY OPINIONS
` My opinions are in support of the inter partes review of the `580
`22.
`
`patent claims 1, 2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59, 61, 62, 66, 70, and 76-79.
`
`
`23.
`
`It is my opinion that claims 1, 2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59,
`
`61, 62, 66, 70, and 76-79 are anticipated under 35 U.S.C. § 102(b) or rendered
`
`obvious under 35 U.S.C. § 103 by P802.11 Draft Wireless LAN Medium Access
`
`Control (MAC) and Physical Layer (PHY) Specification, 23 May 1996, (“Draft
`
`
`
`6
`
`DOCSLA-118537v1
`
`Exhibit 1019 09/76
`
`

`

`
`
`802.11 Standard” or “Standard”) (Ex. 1005) (which eventually published in 1997.
`
`See Ex. 1006.)
`
`24.
`
`It is also my opinion that claims 1, 2, 4-5, 10, 13, 19-22, 49, 52-54,
`
`57-59, 61, 62, 66, 70, and 76-79 are rendered obvious under 35 U.S.C. § 103 by
`
`the Draft 802.11 Standard in view of U.S. Patent No. 5,706,428 (“Boer”) (Ex.
`
`1016).
`
`V. LEGAL PRINCIPLES
`
`25.
`I understand that a claim is invalid if it is anticipated under 35 U.S.C.
`
`§ 102 or obvious under 35 U.S.C. § 103.
`
`A. Anticipation
`
`26.
`I understand that for a claim to be anticipated, every limitation of the
`
`claimed invention must be found in a single prior art reference, either expressly or
`
`inherently.
`
`
`27.
`
`I understand that anticipation and obviousness are determined on a
`
`claim-by-claim basis by comparing the claim, as construed by the Court, to the
`
`prior art.
`
`
`28.
`
`I understand that when a claim covers several alternative structures or
`
`elements, either generically or as alternatives, the claim is anticipated if any one of
`
`the structures or elements within the scope of the claim is disclosed in or practiced
`
`by a single prior art reference.
`
`29.
`
`I have been informed that if a single prior art reference discloses each
`
`and every element of an asserted claim, either expressly or inherently, it anticipates
`
`and therefore invalidates that claim under 35 U.S.C. § 102. For a claim element to
`
`
`
`7
`
`DOCSLA-118537v1
`
`Exhibit 1019 10/76
`
`

`

`
`
`be inherently present in a prior art reference, I understand that the element must be
`
`“necessarily present” in the disclosed apparatus, system, product, or method, and
`
`not probably or possibly present. It is acceptable to examine evidence outside the
`
`prior art reference (extrinsic evidence) in determining whether a feature, while not
`
`expressly discussed in the reference, is necessarily present in it. In determining
`
`whether or not every one of the elements of the claimed invention is found in the
`
`item of prior art, one should take into account what a person of ordinary skill in the
`
`art would have understood from his examination of the particular item of prior art.
`
`30.
`
`I have been informed that there are several ways in which a patent
`
`claim can be invalid under 35 U.S.C. § 102. First, I have been informed that a
`
`patent claim is invalid under 35 U.S.C. § 102(a) if the invention described in the
`
`claim was known or used by others in the United States or was patented or
`
`described in a printed publication, such as a journal, magazine or newspaper
`
`article, anywhere in the world before the applicants’ invention date. I understand
`
`that the prior art reference must be evaluated for what it conveys to one of skill in
`
`the art.
`
` Second, I have been informed that a patent claim is invalid under 35
`31.
`
`U.S.C. § 102(b) if the invention was patented or described in a printed publication
`
`anywhere in the world or was in public use or on sale in the United States more
`
`than one year before the effective filing date/priority date of the patent in the
`
`United States.
`
` Third, I have been informed that a patent claim is invalid under 35 U.
`32.
`
`S. C. § 102(e) if the invention described in the claim was described in a patent by
`
`
`
`8
`
`DOCSLA-118537v1
`
`Exhibit 1019 11/76
`
`

`

`
`
`another inventor that was filed in the United States before the applicants’’
`
`invention date.
`
`33.
`
`I have been informed that, unless the patent owner comes forward
`
`with evidence proving that it is entitled to an earlier priority date for a patent, the
`
`date of the invention for purposes of Sections 102(a) and (e) is the filing date of the
`
`patent. I have been informed that to establish a priority date earlier than the filing
`
`date, Plaintiff must show (i) an earlier reduction to practice of the invention, or (ii)
`
`an earlier date of conception followed by a diligent attempt to reduce the invention
`
`to practice.
`
`
`34.
`
`I have been informed that for a document to constitute a “printed
`
`publication” under 35 U.S.C. § 102 and thus potentially qualify as prior art, that
`
`document must be reasonably accessible to that portion of the public most likely to
`
`use it; the publication need only be reasonably available to interested members of
`
`the public. The date that a printed publication becomes available to the public is
`
`the date that it becomes prior art. I have been informed that any printed
`
`publication that was published more than one year before the application for the
`
`patent was filed will constitute prior art regardless of the alleged date of invention.
`
`35.
`
`I have also been informed that a prior art reference must only be
`
`shown to perform or disclose the steps of a method claim to anticipate that claim.
`
`The fact that there may be other circumstances where the prior art may not perform
`
`the recited step does not prevent the art from being anticipatory.
`
`
`36.
`
`I understand that the test for anticipation is essentially identical to the
`
`test for literal infringement, leading to the use of the phrase “that which infringes if
`
`
`
`9
`
`DOCSLA-118537v1
`
`Exhibit 1019 12/76
`
`

`

`
`
`later anticipates if earlier.” In other words, if granting patent protection on the
`
`disputed claim would allow the patentee to exclude the public from practicing the
`
`prior art, then that claim is anticipated. I have been further informed that courts
`
`will not read limitations into the claims that are not there in order to prevent an
`
`anticipation - if the claims are broad enough to read onto the prior art, courts will
`
`find them anticipated.
`
`B. Obviousness
`
`I understand that a claim is invalid for obviousness if the differences
`37.
`
`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 (or, in some cases, at the statutory “critical date” of the patent claim) to a
`person having ordinary skill in the art to which said subject matter pertains.1
`
`In determining whether a claimed invention is obvious, I understand
`38.
`
`that one should consider (i) the scope and content of the prior art, (ii) the level of
`
`ordinary skill in the relevant art, (iii) the differences between the claimed invention
`
`and the prior art, and (iv) whether the claimed invention would have been obvious
`
`to one of ordinary skill in the art in light of those differences.
`
`39.
`
`I understand that, historically, the applicable framework for assessing
`
`obviousness was whether there was a teaching, suggestion, or motivation, either
`
`
`1 I understand that the statutory “critical date” may be used for the obviousness
`determination where a reference was published more than one year before the
`
`earliest effective filing date of a patent application.
`
`
`
`10
`
`DOCSLA-118537v1
`
`Exhibit 1019 13/76
`
`

`

`
`
`explicitly or implicitly, in the prior art to combine the teachings of the references.
`
`I have been informed that although the claimed subject matter can still be found
`
`obvious when that test is satisfied, the obviousness inquiry is actually broader and
`
`more flexible than that. One need not identify such teachings, suggestion, or
`
`motivation explicitly in the prior art. Instead, one can take into account the
`
`inferences, creative steps, common knowledge and common sense that a person of
`
`ordinary skill in the art would employ.
`
`
`40.
`
`I understand that if one of ordinary skill in the art can implement a
`
`predictable variation of an apparatus or method prompted by market forces or
`
`design incentives, such a variation is obvious. I understand that if a technique has
`
`been used to improve one device, and one of ordinary skill in the art would
`
`recognize that it would improve similar devices in the same way, using the
`
`technique is obvious unless its actual application is beyond ordinary skill. Stated
`
`differently, I understand that the proper question is whether one of ordinary skill,
`
`facing the wide range of needs created by developments in the field of endeavor,
`
`would have seen a benefit to combining the teachings of the prior art.
`
`
`41.
`
`I understand that where there is a design need or market pressure to
`
`solve a problem and there are a finite number of identified, predictable solutions, it
`
`is obvious to pursue the known options within the grasp of one of ordinary skill. In
`
`this situation, I understand that the result is likely the product not of innovation but
`
`of ordinary skill and common sense. I also understand that 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 the obviousness
`
`
`
`11
`
`DOCSLA-118537v1
`
`Exhibit 1019 14/76
`
`

`

`
`
`determination should consider whether a certain combination would have been
`
`obvious to try.
`
`42.
`
`I understand that contemporaneous development of similar variations
`
`of a device or method by other parties is indicative of obviousness. In establishing
`
`obviousness, I understand that one must avoid the “temptation to read into the prior
`
`art the teachings of the invention in issue” and “guard against slipping into the use
`
`of hindsight.” The prior art itself, and not the applicant’s achievement, must
`
`establish the obviousness of the combination.
`
`43.
`
`I understand that certain objective factors, sometimes known as
`
`“secondary considerations” must also be taken into account in determining whether
`
`a claimed invention would have been obvious. I understand that such secondary
`
`considerations as “commercial success, long felt but unsolved needs, [and] failures
`
`of others” may be evidence of nonobviousness. If such factors are present, they
`
`must be considered in determining obviousness. I understand that there must be a
`
`connection between the evidence showing any secondary considerations and the
`
`claimed invention if the evidence is to be given any weight in the obviousness
`
`inquiry.
`
` Commercial success: A strong showing of commercial
`success that can be attributed to the merits of the invention
`should be considered an indication of nonobviousness
`
`
`
`12
`
`DOCSLA-118537v1
`
`Exhibit 1019 15/76
`
`

`

`
`
` Copying: Evidence that an accused party copied the
`patented invention, as opposed to a prior art device, is an
`indication of nonobviousness.
`
` Long-standing problem or need: Evidence of a persistent
`problem or need in the art that was resolved by the patented
`invention is an indication of nonobviousness.
`
` Prior failure: Evidence that others have tried and failed to
`solve the problem or provide the need resolved by the
`claimed invention is an indication of nonobviousness.
`
` Licenses: The willingness of industry to license the patent
`at issue is an indication of nonobviousness, though
`consideration must be given to distinguishing respect for
`the invention from a desire to avoid litigation.
`
` Skepticism: Evidence that those of skill were skeptical as to
`the merits of the invention, or even taught away from the
`invention, are indications of nonobviousness.
`
` Prior litigation: Prior litigation may support an argument of
`commercial success or copying.
`
` Unexpected results: Evidence that those of skill in the art
`were surprised by the capabilities of the claimed invention
`is an indication of nonobviousness.
`
`It is my understanding that any assertion of the above indications must be
`
`
`
`13
`
`DOCSLA-118537v1
`
`Exhibit 1019 16/76
`
`

`

`
`
`accompanied by a nexus between the merits of the invention and the evidence
`
`offered, otherwise the evidence does not actually tend to show that the invention
`
`was nonobviousness.
`
`
`44.
`
`I understand that the person of ordinary skill is a hypothetical person
`
`who is presumed to be aware of all of the pertinent art. A person of ordinary skill
`
`also has an ordinary level of creativity. I understand that the person of ordinary
`
`skill is not an automaton, and may be able to fit together the teachings of multiple
`
`prior art references employing ordinary creativity and the common sense that
`
`familiar items may have obvious uses beyond their primary purposes. In many
`
`cases, a person of ordinary skill will be able to fit the teachings of multiple prior art
`
`together like the pieces of a puzzle. I understand that a patent which claims
`
`predictable uses of old elements according to their established functions to achieve
`
`predicable results may be found invalid as obvious. I understand that the
`
`perspective of one of ordinary skill in the art is used to determine obviousness, as
`
`well as anticipation, as discussed above.
`
`
`45.
`
`I understand that art that is analogous to the subject matter of the
`
`patent may properly be used as an obviousness reference. I understand that a
`
`reference is reasonably pertinent if, even though it may be in a different field from
`
`that of the inventor’s endeavor, it is one which, because of the matter with which it
`
`deals, logically would have commended itself to an inventor’s attention in
`
`considering his problem. When a work is available in one field of endeavor,
`
`design incentives and other market forces can prompt variations of it, either in the
`
`same field or a different one. If a person of ordinary skill can implement a
`
`
`
`14
`
`DOCSLA-118537v1
`
`Exhibit 1019 17/76
`
`

`

`
`
`predictable variation, then the invention is unpatentable as obvious. For example,
`
`if a technique has been used to improve one device, and a person or ordinary skill
`
`in the art would recognize that it would improve similar devices in the same way,
`
`using the technique is obvious unless its actual application is beyond his or her
`
`skill.
`
` Often, it will be necessary for one addressing the obviousness of a
`46.
`
`claim to look at interrelated teachings of multiple patents, references and prior art
`
`products; the effects of demands known to the design community or present in the
`
`marketplace; and the background knowledge possessed by a person of ordinary
`
`skill in the art, all in order to determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.
`
`47.
`
`I understand that an invention is obvious if one of ordinary skill in the
`
`art, faced with the wide range of needs created by developments in the field, would
`
`have found it obvious to employ the solution tried by the applicant to meet such
`
`needs.
`
`
`48.
`
`In determining whether the subject matter of a patent claim is obvious,
`
`neither the particular motivation nor the avowed purpose of the patentee controls.
`
`What matters is the objective reach of the claim. If the claim extends to what is
`
`obvious, it is invalid. One of the ways in which a patent’s subject matter can be
`
`proved obvious is by noting that there existed at the time of invention a known
`
`problem for which there was an obvious solution encompassed by the patent’s
`
`claims.
`
`
`
`15
`
`DOCSLA-118537v1
`
`Exhibit 1019 18/76
`
`

`

`
`
`
`49.
`
`In addition to the foregoing, it is my understanding that I should also
`
`consider that: (a) a combination is obvious if it simply arranges old elements and
`
`yields no more than one would expect from such an arrangement; (b) merely
`
`substituting one element for another known in the field would be considered
`
`obvious unless that substitution yields an unpredictable result; (c) when work is
`
`available in one field of endeavor, design incentives and other market forces can
`
`prompt variations, either in the same field or a different one. (If a person of
`
`ordinary skill can implement a predictable design variation, and would see the
`
`benefit from doing so, then that subject matter is obvious. In such a situation, the
`
`successful use of that variation is not the product of innovation but ordinary skill
`
`and common sense. For that same reason, if a technique has been used to improve
`
`one device, and a person of ordinary skill would recognize that it would improve
`
`similar devices in the same way, using that technique would be obvious unless the
`
`actual application of that technique is beyond the artisan’s skill); and (d) any need
`
`or problem known in the field of endeavor can provide a reason for combining the
`
`prior art; the analysis should not be confined to whether the need or problem
`
`identified by the patentee was known in the prior art.
`
`C. Claim Interpretation in Inter Partes Review
`
`I understand that claims in inter partes review are given their broadest
`50.
`
`reasonable interpretation that is consistent with the patent specification. I
`
`understand that in determining the broadest reasonable construction of a claim
`
`term, one should consider subject matter that Patent Owner contends infringes the
`
`
`
`16
`
`DOCSLA-118537v1
`
`Exhibit 1019 19/76
`
`

`

`
`
`claims or meanings for claim terms that Patent Owner has proposed in past or in
`
`current litigation
`
`VI. THE TECHNOLOGY DESCRIBED IN THE `580 PATENT
` The `580 patent is directed to the “fields of data communications and
`51.
`
`modulator/demodulators (modems), and, more particularly, to a data
`
`communications system in which a plurality of modulation methods are used to
`
`facilitate communication among a plurality of modem types.” Ex. 1001, `580
`
`patent, 1:19-23. The `580 patent identifies a problem with communications
`
`systems where “communication between modems is generally unsuccessful unless
`
`a common modulation method is used.” Id. at 1:45-47. The `580 patent describes
`
`a “multipoint network architecture,” which the `580 patent asserts utilizes a
`
`“master” modem and at least two “tributary” (or “trib”) modems. The `580 patent
`
`notes that where “…one or more of the trib modems are not compatible with the
`
`modulation method used by the master, those tribs will be unable to receive
`
`communications from the master.” Id. at 1:54-61.
`
` The `580 patent asserts that “…communication systems comprised of
`52.
`
`both high performance and low or moderate performance applications can be very
`
`cost inefficient to construct.” Id. at 1:66-2:1. The `580 patent further asserts that
`
`the solution used at the time to overcome incompatible modulation schemes was
`
`the use of high performance modems for all users, which resulted in higher costs.
`
`Id. at 2:8-16. Thus, the `580 patent asserts that “…what is sought, and what is not
`
`believed to be provided by the prior art, is a system and method of communication
`
`in which multiple modulation methods are used to facilitate communication among
`
`
`
`17
`
`DOCSLA-118537v1
`
`Exhibit 1019 20/76
`
`

`

`
`
`a plurality of modems in a network, which have heretofore been incompatible.” Id.
`
`at 2:17-20 (emphasis added).
` The alleged invention of the `580 patent is a system like that shown in
`53.
`
`Figure 3, in which a master transceiver 64 is capable of transmitting and receiving
`
`data having what the patent identifies as “type A” modulation and “type B”
`
`modulation. Id. at 5:23-33. Master transceiver 64 can communicate with tribs,
`
`e.g., trib 66, each of which communicates with either type A or type B modulation
`
`(shown as “type X” in Figure 3), but not both. Id. at 5:34-46. Figure 4 shows an
`
`exemplary network in which master transceiver 64 can communicate with either
`
`type A or typ