Patent No. 8,156,236
`Petition For Inter Partes Review
`
`Paper No.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`NeuLion, Inc.,
`
`'
`
`Petitioner
`
`V.
`
`. FILIPPO COSTANZO, SAVERIO RONCOLINI, and ANTONIO ROS SI
`Patent Owners
`
`US. Patent No. 8,156,236
`Issue Date: April 10, 2012
`Title: AUDIO—VIDEO DATA SWITCHING AND VIEWING SYSTEM
`
`Inter Partes Review No. Unassigned
`
`________________—.—__—-————-————-—-——
`
`Declaration of Henry Houh Regarding
`US. Patent No. 8,156,236
`
`Neulion 1027
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`A. Engagement ........ 1
`
`B.
`
`C.
`
`D.
`
`Background and Qualifications ............................................................ l
`
`Compensation and Prior Testimony ..................................................... 5
`
`Information Considered ..................................................... -................... 6
`
`II.
`
`LEGAL STANDARDS FOR PATENTABILITY ......................................... 7
`
`A.
`
`Anticipation .......................................................................................... 8
`
`,
`
`III.
`
`Obviousness .......................................................................................... 9
`B.
`THE ‘236 PATENT ...................................................... . ............................... 14
`
`A.
`
`B.
`
`C.
`
`D.
`
`Prosecution History Of The ‘236 Patent and Effective Filing
`Date of the ‘236 Patent ....................................................................... 14
`
`Person of Ordinary Skill in the Art .................................................... 15
`
`Terms Used in the Claims .................................................................. 15
`
`Technical Background ........................................................................ 20
`
`IV.
`V.
`
`PRIOR ART .................................................................................................. 22
`PATENTABILITY ANALYSIS OF CLAIMS 16, 17, 18, 19, 20, 21,
`22, 25, 26, 27, 28, 29, 30, 31, AND 34 OF THE ’236 PATENT ................. 26
`
`A.
`
`1.
`
`2..
`
`3.
`
`4.
`
`5.
`
`Claim 16 ............................................................................................. 26
`
`Preamble —~ “A system for viewing and switching of audio-
`video data, comprising...” ......................................................... . ........ 26
`
`_ Limitation 1 — “a plurality of audio and video sources
`containing information referring to an even ” .................................... 28
`
`Limitation 2 —- “a streaming server for streaming contents of a
`first audio file and a first and second video files from the audio
`and video sources to a plurality of users over a network” ................. 29
`
`Limitation 3 — “the first audio file being interleaved with the
`first video file” ......._............................................................................. 31
`
`Limitation 4 — “the streaming server establishing separate
`sessions with the plurality of users by sending each user a
`separate stream” .................................................................................. 32
`
`ii
`
`

`

`Limitation 5 -— “at least one of the video files having a key
`frame” ................................................................................................. 33
`
`Limitation 6 —- “and a feed distributor, connected between the
`audio and Video sources and the streaming server, the feed
`distributor controllably feeding the first audio file and first
`video file to the streaming server” ..................................................... 34
`
`Limitation 7 — “wherein the feed distributor can receive
`instructions from a user to switch between video files” ..................... 35
`
`Limitation 8 —— “wherein the video files are differentially
`compressed before streaming and comprise key frames” .................. 37
`
`10.
`
`Limitation 9 — “and wherein switching between the first video
`file and the second video signal occurs when the key frame is
`encountered” ....................................................................................... 37
`
`Claim 17 ............................................................................................. 39
`
`Preamble — “A method for viewing and switching of audio-
`video data over a network using a client~server system,
`comprising the steps of:” .................................................................... 39
`
`Limitation 1 — “providing a plurality of audio and Video sources
`containing information referring to an event” .................................... 41
`
`Limitation 2 — “streaming on a server contents of a first audio
`file and a first video file from the audio and video sources to a
`plurality of users over a network” ...................................................... 43
`
`Limitation 3 — “the first audio file being interleaved with the _
`first video file” .................................................................................... 44
`
`Limitation 4 — “establishing separate sessions with the plurality
`of users by sending each user a separate stream” ............................... 45
`
`Limitation 5 — “controlling on the server the streaming of the
`video files, so as to switch between video files” ................................ 46
`
`Limitation 6 —— “and streaming, upon switching, a second video
`file which is different from the first video file” ................................. 47
`
`Limitation 7 — “wherein the Video files are differentially
`compressed before streaming and comprise key frames” .................. 50
`Limitation 8 — “and wherein the controlling step switches
`between the first video file and the second video file when a
`key frame of one of the video files is encountered” ........................... 51
`
`iii
`
`

`

`Claim 18 ............................................................................................. 53
`
`Preamble — “A computer—operated method for viewing and
`switching of audio-video data over a network using a client-
`server system, comprising the steps of:” ............................................ 53
`
`Limitation l — “(a) providing at least a first audio file and at
`least first and second video files containing information
`referring to same event” ..................................................................... 56
`
`Limitation 2 — “(b) streaming on a server contents of the first
`audio file and the first video file to a plurality of users over a
`network” ................................................ 57
`
`Limitation 3 —~ “the first audio file being interleaved with the
`first Video file” .................................................................................... 58
`
`Limitation 4 ~— “(c) establishing separate sessions with the
`plurality of users by sending each user a separate stream” ..... 59
`
`Limitation 5 — “(d) simultaneously with step (b), outputting the
`second video file, the second video file being different from the
`first Video file” ........................................... '......................................... 60
`
`Limitation 6 — “(e) controlling on the server side the streaming
`of video files, so as to switch streaming from the first video file
`to the second video file for at least one user” .................................... 64
`
`Claim 19 ............................................................................................. 65
`
`“The system of claim 18, wherein upon switching in step (e),
`the first audio file continues to be streamed” ..................................... 65
`
`Claim 20 ............................................................................................. 68
`
`“The method of claim 18, wherein upon switching in step (e), a
`second different audio file is streamed” ............................................. 68 .
`
`Claim 21 ............................................................................................. 70
`
`Limitation l — “wherein the video files have a key frame” ............... 70
`
`Limitation 2 —- “the step of switching in step (e) occurs when a
`key frame of one of the video files is detected” ................................. 70
`
`Claim 22 ............................................................................................. 73
`
`Preamble .. “A system for viewing and switching of audio“
`video data, comprisingt” ..................................................................... 73
`
`iv
`
`

`

`Limitation l —— “a plurality of audio and video sources
`containing information referring to an event” .................................... 75
`
`Limitation 2 — “a streaming server for streaming contents of a
`first audio file and a first video file from the audio and video
`sources to a plurality of users over a network” .................................. 77
`
`Limitation 3 —- “the first audio file being interleaved with the
`first video file” .................................................................................... 78
`
`Limitation 4 ._ “the streaming server being configured for
`_
`establishing separate sessions with the plurality of users by
`sending each user a separate stream” ................................................. 79
`
`Limitation 5 — “a feed distributor machine, connected between
`the audio and video sources and the streaming server, the feed
`distributor machine being configured for controllably feeding
`the first audio file and first video file to the streaming server” ......... 80
`
`Limitation 6 — “the feed distributor machine also being
`configured for simultaneously outputting a second video file
`from the audio and video Sources, the second video file being
`different from the first video file, the outputting ofthe second
`video file occurring without the second video file being
`streamed to a user” ............................................................................. 82
`
`Limitation 7 —- “wherein the feed distributor machine comprises
`a session manager that is configured to switch between video
`1es
`...................................................................................................
`fl
`”
`
`83
`
`Limitation 8 — “whereby, upon switching, the feed distributor
`machine can cause the streaming server to stream the second
`video file to at least one selected user and stOps streaming the
`first video file to the selecteduser” ........... 84.
`
`Claim 25 ............................................................................................. 86
`
`Limitation l — “wherein at least one of the video files has a key
`frame” ................................................................................................. 86
`
`Limitation 2 — “the session manager is configured to instruct
`the feed distributor machine to switch when the key frame is
`detected” ............................................................................................. 87
`
`Claim 26 ...................................................................................... 89
`
`

`

`Preamble — “A method for persistently streaming a plurality of
`multimedia files over a network, the method comprising the
`steps of:” ............................................................................................. 89
`
`Limitation l — “(a) establishing a persistent connection with a
`client by exposing an application-level protocol and initializing
`a streaming session with a server having a client side and a
`server side” ......................................................................................... 95
`
`Limitation 2 — “wherein, the streaming session encapsulates a
`plurality of multimedia files that is for acknowledgement by the
`client without using bandwidth of the streaming session” ................. 95
`
`Limitation 3 — “(b) creating one or more instances of a software
`object comprising one or more of the encapsulated multimedia
`files to controllably feed a first instance in the streaming
`session”....-............... _. ........................................................................... 97
`
`Limitation 4 ~— “(c) exposing remote methods of the application-
`level protocol for exchanging requests and parameters on the
`server side and the client side to transmit commands to one or
`more instances of the software object” ............................................... 97
`
`Limitation 5 — “(d) receiving on the server side a client request
`for a second instance of the softWare object” ..................................... 98
`
`Limitation 6 — c‘(e) transferring the second instance of the
`software object to the streaming session”. .......................................... 99
`
`Limitation 7 —- “wherein the second instance of the software
`object is different than the first instance” ......................................... 100
`
`Limitation 8 -— “(fl switching to the second instance of the
`software object without interrupting the persistent streaming
`session” ............................................................................................. 100
`
`Claim 27 ........................................................................................... 100
`
`“The method of claim 26, wherein the step of switching to the
`second instance occurs when a key frame in one of the
`multimedia files is detected” ............................................................ 100
`
`Claim 2 8 ........................................................................................... 103
`
`Preamble —- “A method for persistently streaming a plurality of
`multimedia files over a network, the method comprising the
`steps of:” ....................................'....................................................... 103
`
`vi
`
`

`

`Limitation 1 — “(a) an application—level protocol for
`establishing a persistent connection with a client and initializing
`a streaming session with a server” ................................................... 109
`
`Limitation 2 — “the server having a server side and a client side” 109
`
`Limitation 3 — “wherein, the streaming session encapsulates a
`plurality of multimedia files that is transmitted for receipt by
`the client without using bandwidth of the streaming session” ......... 109
`
`Limitation 4 — “(b) one or more instances of a software object
`comprising one or more multimedia files to controllably feed a
`first instance in the streaming session; wherein the one or more
`multimedia files is selected from the encapsulated plurality of
`multimedia files” .............................................................................. ll 1
`
`Limitation 5 — “(c) one or more server side objects
`communicatively coupled to the application-level protocol for
`exposing one or more remote methods of the protocol for
`exchanging requests and parameters with a client side object to
`transmit commands to one or more instances of the software
`object” ............................................................................................... 1 12
`
`Limitation 6 — “(d) one or more client side objects
`communicatively coupled to the application—level protocol for
`exposing one or more remote methods of the protocol for
`exchanging requests and parameters with the server side object
`to transmit commands to one or more instances of the software
`object” ............................................................................................... 112
`
`Claim 29 ........................................................................................... 114
`
`“The system of claim 28, wherein the plurality of multimedia
`files comprises differential compressed video frames” .................... 114
`
`Claim30 ................................................................ 115
`
`“The system of claim 28, wherein the one or more instances of
`the software object has a persistent streaming session
`bandwidth that is substantially the same as a single multimedia
`file” ................................................................................................... 115 '
`
`Claim 31
`
`................ 116
`
`“The system of claim 28, wherein the one or more client side
`objects are requests from a user” ...................................................... 116
`
`vii
`
`

`

`0.
`
`1.
`
`Claim 34 ........................................................................................... 116
`
`“The system of claim 28, wherein the plurality of multimedia
`files comprises live encoded sources” .............................................. 116
`
`VI. APPENDIX A: MATERIALS CONSIDERED ......................................... 120
`
`viii
`
`

`

`TABLE OF APPENDICES
`
`Appendix A:
`
`List of Materials Considered
`
`ix
`
`

`

`I.
`
`INTRODUCTION
`
`A.
`
`Engagement
`
`1.
`
`I have been retained by counsel for NeuLion, Inc. (“NeuLion”) as an
`
`expert witness in the above—captioned proceeding. I have been asked to provide
`
`my opinion about the state of the art of the technology described in US. Patent No. -
`
`8,156,236 (“the ‘236 patent”) (Ex. 1001) and on the patentability of claims 16, 17,
`
`18, 19, 20, 21, 22, 25, 26, 27, 28, 29, 30, 31, and 34 ofthe ‘236 patent. The.
`
`following is my written report on these topics.
`
`B.
`
`Background and Qualifications
`
`2.
`
`3.
`
`My Curriculum Vitae is submitted herewith as Exhibit 1028.
`
`I received a Ph.D. in Electrical Engineering and Computer Science
`
`from the Massachusetts Institute of Technology in 1998.
`
`I also received a Master
`
`of Science degree in Electrical Engineering and Computer Science in 1991 from
`
`the Massachusetts Institute of Technology, a Bachelor of Science Degree in
`
`_ Electrical Engineering and Computer Science in 1990 from the Massachusetts
`Institute of Technology, and a Bachelor of Science Degree in Physics in 1989 from
`
`the Massachusetts Institute of Technology.
`
`4.
`
`I am currently self-employed as an independent technical consultant.
`
`I am also president of a company that provides science, technology, engineering,
`
`and math education to children of all ages.
`
`‘ 5.
`
`As further indicated in my C.V., I have worked in the electrical
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`Page. 1
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`

`

`engineering and computer science fields, including in the area of multimedia
`
`streaming, on several occasions. As part of my doctoral research at MIT from
`
`1991-1998, I worked as a research assistant in the Telemedia Network Systems
`
`(TNS) group at the Laboratory for Computer Science. The TNS group built a high
`
`speed gigabit network.
`
`6.
`
`-I authored or co-authored twelve papers and conference presentations
`
`on our group’s research.
`
`I also co—edited the final report of the gigabit networking
`
`‘
`
`research effort with the Professor (David Tennenhouse) and Senior Research '
`
`Scientist of the group (David Clark). David Clark is generally considered to be
`
`one of the fathers of the Internet Protocol.
`
`7.
`
`I first worked in the area of digital and streaming media, including
`
`real-time streamed audio and video, as part of my doctoral research at MIT from.
`
`1991- 1998. As noted above, during that time, I was a research assistant in the
`
`Telemedia NetwOrk Systems (TNS) that built a high-speed gigabit network and
`
`created applications that ran over the network. Example applications included
`
`remote video capture, processing, and display of video on computer terminals. In
`
`addition to working on the design of core network components, designing and
`
`building the high speed links, and designing and writing the device drivers for the
`interface cards, I also set up the group’s web server, which at the time was one of
`
`I
`
`the first several hundred web servers in existence.
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`Page 2
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`

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`8.
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`The TNS group was the first group to initiate a remote video display
`
`over the web. Vice-President Al Gore visited our group in 1996 and received a
`
`demonstration of — and remotely drove — a radio controlled toy car with a wireless
`
`video camera mounted on it; the video was encoded by TNS—designed hardware,
`
`streamed over the TNS-designed network, and displayed using TNS-designed
`
`software.
`
`9.
`
`I defended and submitted my Ph.D. thesis, titled “Designing Networks
`
`I
`
`for Tomorrow’s Traffic,” in January 1998. As part of my thesis research, I
`
`analyzed local-area and wide«area flows to show a more efficient method for
`
`routing packets in a network, based on traffic patterns at the time. My thesis also
`
`addressed real-time streamed audio and video.
`
`10.
`
`I started building web servers in 1993, having set up the web server
`
`for the MIT TNS group, to which I belonged. As noted, it was one of the first
`
`several hundred web servers in existence, and I went on to provide what was one
`
`of the first live Internet videos initiated from a web site.
`
`I authored papers on our
`
`web server video system and on database-backed web sites, and I presented these
`
`papers at the first World Wide Web conference.
`
`11.
`
`From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
`
`Corporation, a start-up that made business telephone systems that streamed
`
`' packetized audio over data networks instead of using traditional phone lines. NBX
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`Page 3
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`

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`was later acquired by 3Com Corporation, and the phone system is still available
`
`and being used at tens of thousands of businesses or more. As part of my work at
`
`NBX, I designed the core audio reconstruction algorithms for the telephones, as
`
`well as the packet transmission algorithms. 1 also designed and validated the core
`
`packet tranSport protocol used by the phone system. The protocol is used millions
`
`of times daily currently. Two of the company founders and I received US Patent
`
`No. 6,697,963 titled “Telecommunication method for ensuring onwtime delivery of
`
`packets containing time sensitive data,” for some of the work I did there.
`
`12.
`
`Starting in 2001, I was an architect for the next generation of web
`
`testing products by Empirix known as e-Test Suite. e-Test Suite is now owned by'
`
`Oracle Corporation. efTest provided functional and load testing for web sites. e-
`Test emulated a user's interaction with-a web site and provided web developers
`
`with a method of creating various scripts and providing both functional testing
`
`(e.g., confirming that the web site provided the correct response) and load testing '
`
`(e.g., confirming that the web site could handle 5000 users on its web site
`
`simultaneously). Among Empirix's customers was H&R Block, who used e-Test
`
`Suite to test the tax filing functionality of its web site as whether the web site could
`
`handle a large "expected load prior to the tax filing deadline.
`
`13. Around 2006, I helped create a search engine for audio and video
`
`which could be searched based on spoken word content. Our system used speech
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`Page 4
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`recognition and natural language processing to create a search index of audio and
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`video files posted publicly on the Internet. Today, at RAMP Inc., the project has
`
`grown to a product that is used by media outlets such as ABC, CBS, NBC, Fox,
`
`and Reuters.
`
`14. Around 2008-2009, while I was Chief Technology Officer at Eons, a
`
`venture backed company founded by Jeff Taylor, who also founded the hiring web
`
`site Monster.com, Eons launched an advertising network. Eons built a network of
`
`Sites on which advertisements could be placed, fiilfilled client advertisement
`
`purchases, and tracked delivery of clients’ advertisements. In addition, we utilized
`
`the Solr search platform in order to index the millions of items of content added by
`
`Eons members, in order to make them searchable.
`
`I 15.
`
`I have also continued to develop web sites for various business
`
`projects, as well as setting up web sites on a volunteer basis for various groups that
`
`I am associated with.
`
`16.
`
`I am the author of several publications devoted to a wide variety of
`
`technologies in the fields of electrical engineering and computer science. These
`
`publications are'listed on my CV. (Ex. 1028).
`
`C.
`
`17.
`
`Compensation and Prior Testimony
`
`I am being compensated at a rate of $475 per hour for my work in this
`
`matter.
`
`I am also being reimbursed for expenses associated with my work. My
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`Page 5
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`compensation is not contingent on the outcome of this matter or the specifics of my
`
`testimony.
`
`18.
`
`I have testified in United States District Courts three times and once in
`
`the International Trade Commission. Most recently, I testified in “Certain Digital
`
`'Media Devices, Including Televisions, Blu~ray Disc Players, Home Theater
`
`Systems, Tablets and Mobile Phones, Components Thereofand Associated
`
`Software” in the International Trade Commission and in the Two- Way Media LLC
`
`v. AT&T Inc. matter in the Western District of Texas.
`
`I have also testified in the
`
`Verizon v. Vonage and Verizon 12. Cox matters, both in the Eastern District of
`
`Virginia.
`
`D.
`
`Information Considered
`
`l9.
`
`- 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, in addition to my general knowledge based on my education and
`
`' experience, I have considered the materials identified in this report and those listed
`
`in Appendix A.
`
`I may rely upon these materials and/or additional materials to
`
`respond to arguments raised by the Patent Owner.
`
`20.
`
`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
`
`Page 6
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`

`

`information and on my continuing analysis of the materials already provided.
`
`II.
`
`LEGAL STANDARDS FOR PATENTABILITY
`
`21.
`
`In expressing my opinions and considering the subject matter of the
`
`claims of the ‘236 patent, I am relying upon certain basic legal principles that have
`
`been explained to me.
`
`22.
`
`First, I understand that for an invention claimed in a patent to be
`
`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 that in this proceeding NeuLion has the burden of
`
`proving by a preponderance of the evidence that the. claims of the ‘236 patent are
`
`not patentable in view of the prior art.
`
`I understand that “a preponderance of the
`
`evidence” is evidence sufficient to show that a fact is more likely true than not
`
`true.
`
`25.
`
`I understand that in this proceeding, the claims must be given their
`
`broadest reasonable interpretation consistent with the specification, and that the
`
`claims, after being construed in this manner, are then to be compared to the
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`Page 7
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`

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`information in the prior art.
`
`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 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 qualify as 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.
`
`28.
`
`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 render the claim “obvious” to a
`
`person of ordinary skill in the art. My understanding of the two legal standards is
`
`set forth below.
`
`A.
`
`29.
`
`Anticipation
`
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`30.
`
`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
`
`Page 8
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`

`

`a single prior art reference.
`
`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
`
`I data structures that are necessary to comply with the published standard.
`
`31.
`
`I understand that it is acceptable to consider evidence other than 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
`
`32.
`
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made.
`
`33.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows:
`
`A patent may not be obtained though the invention is not identically
`
`disclosed or described as set forth in section'102 of this title, if the
`
`differences between the subject matter sought to be patented and the prior art
`
`are such that the subject matter as a whole would have been obvious at the
`
`time the invention was made to a person having ordinary skill in the art to
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`which said subject matter pertains. Patentability shall not be negated by the
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`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.
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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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`0
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`0
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`0
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`0
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`The scope and content of the prior art;
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`The differences between the prior art and the claims at issue;
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`The knowledge of a person of ordinary skill in the pertinent art; and
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`Whatever objective factors indicating obviousness or non-obviousness
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`may be present in any particular case.
`I 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, also known as secondary considerations, may include: commercial
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`success of products covered by the patent claims; a long-felt but unsolved need for
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`the invention; failed attempts by others to make the invention; copying of the
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`invention by others in the field; unexpected results achieved by the invention;
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`praise of the invention by the infringer or others in the field; the taking of licenses-
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`under the patent by others; expressions of surprise by experts and those skilled in
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`the art at the making of the invention; and the patentee proceeded contrary to the
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`accepted wisdom of the prior art. I also understand that such evidence must be
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`specifically connected to the invention rather than being associated with the prior
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`art or with marketing or other efforts to promote an invention.
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`I am not presently
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`aware of any evidence of “objective factors” suggesting that the inventions claimed
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`in the ‘236 patent are not obvious.
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`I reserve the right to address any such evidence
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`if it is identified in the future.
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`I 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.
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`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
`understand that for similar reasons, if a technique has been usedto 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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`Page 11
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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 obviousnessanalysis 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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