DOCKET NO: 5932-5
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`TRIAL NO: IPR2014--------
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`ISSUED: March 13, 2012
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`PATENT: 8,135,398
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`INVENTORS: TIEHONG WANG,
`NING WANG, XIMING WANG,
`TIEJUN WANG, WILLIAM E.
`HALAL
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`FILED: MAY 6, 2011
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`TITLE: METHOD AND
`APPARATUS FOR MULTIMEDIA
`COMMUNICATIONS WITH
`DIFFERENT USER TERMINALS
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF DR. KEVIN C. ALMEROTH
`CONCERNING CLAIMS 58 AND 63 OF U.S. PATENT NO. 8,135,398
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`Samsung Ex. 1005
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`TRIAL NO: IPR2014--------
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`ISSUED: March 13, 2012
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`
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`
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`
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`PATENT: 8,135,398
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`INVENTORS: TIEHONG WANG,
`NING WANG, XIMING WANG,
`TIEJUN WANG, WILLIAM E.
`HALAL
`
`FILED: MAY 6, 2011
`
`TITLE: METHOD AND
`APPARATUS FOR MULTIMEDIA
`COMMUNICATIONS WITH
`DIFFERENT USER TERMINALS
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`DECLARATION OF DR. KEVIN C. ALMEROTH
`CONCERNING CLAIMS 58 AND 63 OF U.S. PATENT NO. 8,135,398
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`Samsung Ex. 1005
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`Almeroth Declaration Concerning Claims 58 and 63 of U.S. Patent No. 8,135,398
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`I.
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`INTRODUCTION
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`1. My name is Dr. Kevin C. Almeroth. I have been asked to submit this
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`declaration on behalf of Samsung Electronics Co., Ltd., Samsung Electronics
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`America, Inc., and Samsung Telecommunications America, LLC (collectively,
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`“Samsung”) in connection with a petition for inter partes review of claims 58 and
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`63 (“the challenged claims”) of U.S. Patent No. 8,135,398 (“the ‘398 patent”) that
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`I understand is being submitted to the Patent Trial and Appeal Board (“the Board”)
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`of the United States Patent and Trademark Office (“PTO” or “USPTO”) by
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`Samsung Electronics Co., Ltd. (“Petitioner”).
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`2.
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`I have been retained as a technical expert by Petitioner to study and
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`provide my opinions on the technology claimed in, and the patentability or non-
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`patentability of, claims 58 and 63 in the ‘398 patent. 1 I understand that the ‘398
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`patent is owned by Virginia Innovation Sciences, Inc. (“VIS” or “Patent Owner”).
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`The ‘398 patent is related to U.S. Patent No. 7,899,492 (“the ’492 patent”),
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`U.S. Patent No. 8,050,711 (“the ’711 patent”), U.S. Patent No. 8,145,268 (“the
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`‘268 patent”) and 8,224,381 (“the ‘381 patent”), sometimes referred to “the ’492
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`1 I understand that the ‘398 patent is Exhibit 1001 to the petition for inter partes
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`review in this proceeding. I also understand that claims 58 and 63 depend from
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`claims 15, 55 and 15, 62, respectively, and that my opinion will address the
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`limitations recited in these claims, as well.
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`Patent Family.”
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`3.
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`In addition, I have been retained by Samsung in connection with a
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`litigation involving the ‘398 patent. The caption of the litigation is Virginia
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`Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd.; Samsung Electronics
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`America, Inc.; Samsung Telecommunications America LLC (Civil Action No.
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`2:12-cv-00548-MSD-DEM) (E.D. Va.) (“the litigation”). In connection with the
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`litigation, I have thus far prepared an expert report regarding the invalidity the ‘398
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`patent (as well as the patents in the ‘492 Patent Family).
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`II.
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`SUMMARY OF OPINIONS
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`4.
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`This declaration is directed to claims 58 and 63 of the ‘398 patent and
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`sets forth certain opinions I have formed, the conclusions I have reached, and the
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`bases for each. However, because claim 58 depends from claim 55 which depends
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`from claim 15, and claim 63 depends from claim 62 which depends from claim 15,
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`this declaration also addresses claims 15, 55 and 62, in order to address all
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`limitations of claims 58 and 63.
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`5.
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`Based on my experience, knowledge of the art at the time of the patent
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`application, analysis of prior art references, and the broadest reasonable
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`interpretation of the claims in light of the specification, it is my opinion that the
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`challenged claims of the ‘398 patent are unpatentable as being rendered obvious by
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`the prior art references discussed below and shown in the claim chart attached as
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`Appendix C.
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`6. More particularly, it is my opinion that:
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`• The combination of U.S. Patent No. 8,028,093 (“Karaoguz”), U.S.
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`Patent No. 7,580,005 (“Palin”) and U.S. Patent Application
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`Publication No. 2004/0223614 (“Seaman”) renders claims 58 and
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`63 obvious, as explained in detail in Appendix C;2
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`7.
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`For example, the ‘398 patent purports to solve “problems with the
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`delivery of Internet content through cellular phones. For example, even with the
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`high bandwidth connection provided by advanced cellular Systems, there remains a
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`bottleneck between the Internet and the cellular network (CN), as well as delays
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`caused by the Internet itself.” ‘398 patent at 1:56-61. According to the ‘398
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`patent, “[w]hat is needed is a solution to the problem of diminished user enjoyment
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`of the various devices and corresponding content that a user may enjoy due to the
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`complications of trying to manage content and interface with a variety of different
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`devices that are not necessarily compatible.” ‘398 patent at 3:9-13. The solution
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`proposed by the ‘398 patent, however, had already been recognized in the prior art.
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`2 I understand that Karaoguz is Exhibit 1002, Palin is Exhibit 1003 and Seaman is
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`Exhibit 1004 to the petition for inter partes review of claims 58 and 63 of the ‘398
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`patent, filed with this declaration.
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`8.
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`For example, U.S. Patent No. 8,028,093 (“Karaoguz”) discloses “a
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`media exchange network comprising an architecture to support adaptive digital
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`media parameters” including, “for example, resolution content, display size, and
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`color/grey-scale content.” Karaoguz, 3:53-4:10. As shown below in Figure 1, the
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`media exchange network may include two communication devices in which the
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`“second communications device may receive a device profile relating to the first
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`communications device, adapt media content based upon the device profile of the
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`first communications device, and send the adapted media content to the first
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`communications device.” Karaoguz, Abstract. Karaoguz also discusses the use of
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`specialized channels for communicating multimedia content among devices. See,
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`e.g., Karaoguz at 8:8-14.
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`9.
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`Additionally, Palin discloses, for example, that “currently available
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`mobile terminals are limited because of the size, … users would not enjoy
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`watching … video on such a display” Palin at 1:21-26. Indeed, the overlap in the
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`solutions proposed by the two patents is reflected in their figures:
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`Palin
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`‘398 Patent
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`10. Although the ’398 patent purports to solve the limited screen size
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`problem by converting and providing the video signal to an alternative (e.g.,
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`external) display system, (‘398 patent at 15:36-64, 16:59 to 17:13), Palin had
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`already arrived at the same solution. Palin teaches transmitting a video received by
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`a “mobile device, such as a mobile phone, laptop computer, or personal digital
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`assistant (PDA)” with certain display capabilities to “another display device, like a
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`television apparatus,” with different display capabilities. Palin at 2:16-25. The
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`’398 patent further discloses receiving and converting the multimedia content item
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`and routing it to the destination device; sending the content to the destination
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`device by establishing a predetermined channel; transporting the multimedia
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`content item to the destination device via the predetermined channel; and directing
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`the destination device to display the multimedia content. Here, too, however, Palin
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`had already taught transporting the multimedia content item to the destination
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`device via the predetermined channel (e.g., Bluetooth); and directing the
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`destination device to display the multimedia content. See, e.g., Palin at Fig 5 and
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`associated text. Additional overlap between Palin and the ‘398 patent is discussed
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`below.
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`11. Also, Seaman is directed toward “a small dedicated device” that is
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`“capable of delivering a video on demand feed to the input of a TV,” able to
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`process compression formats “such as MPEG-2, MPEG-3, MPEG-4 etc,” and
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`output display formats including “NTSC, PAL, SECAM, HDTV, SDTV, RGB,
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`YcbCr, YpbPr, S-Video, CVBS, SDI, HDMI, and DVI.” See, e.g., Seaman, ¶¶ 11,
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`47. One embodiment of Seaman is shown below in the reproduced block diagram
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`of Figure 1:
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`12. Thus Seaman shows that use of HDMI as a communications path for
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`TV input was known to one of ordinary skill in the art at the time of the alleged
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`invention.
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`III. BACKGROUND AND QUALIFICATIONS
`A. Background
`I am currently a Professor in the Department of Computer Science at
`13.
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`the University of California, Santa Barbara. At UCSB, I also hold faculty
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`appointments and am a founding member of the Computer Engineering (CE)
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`Program, Media Arts and Technology (MAT) Program, and the Technology
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`Management Program (TMP). I have been a faculty member at UCSB since July
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`1997.
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`14.
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`I hold three degrees from the Georgia Institute of Technology: (1) a
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`Bachelor of Science degree in Information and Computer Science (with minors in
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`Economics, Technical Communication, and American Literature) earned in June,
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`1992; (2) a Master of Science degree in Computer Science (with specialization in
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`Networking and Systems) earned in June, 1994; and (3) a Doctor of Philosophy
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`(Ph.D.) degree in Computer Science (Dissertation Title: Networking and System
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`Support for the Efficient, Scalable Delivery of Services in Interactive Multimedia
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`System, minor in Telecommunications Public Policy) earned in June, 1997.
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`15. One of the major concentrations of my research to date has been the
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`delivery of multimedia content and data between computing devices. In my
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`research, I have studied large-scale content delivery systems, and the use of servers
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`located in a variety of geographic locations to provide scalable delivery to
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`hundreds, even thousands of users simultaneously. I have also studied smaller-
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`scale content delivery systems in which content is exchanged between individual
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`computers and portable devices. My work has emphasized the exchange of content
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`more efficiently across computer networks, including the scalable delivery of
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`content to many users, mobile computing, satellite networking, delivering content
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`to mobile devices, and network support for data delivery in wireless networks.
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`16. Beginning in 1992, at the time I started graduate school, the initial
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`focus of my research was on the provision of interactive functions (e.g., VCR-style
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`functions like pause, rewind, and fast-forward) for near video-on-demand systems
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`in cable systems, in particular, how to aggregate requests for movies at a cable
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`head-end and then how to satisfy a multitude of requests using one audio/video
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`stream broadcast to multiple receivers simultaneously. Continued evolution of this
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`research has resulted in the development of new techniques to scalably deliver on-
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`demand content, including audio, video, web documents, and other types of data,
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`through the Internet and over other types of networks, including over cable
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`systems, broadband telephone lines, and satellite links (see, e.g., my curriculum
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`vitae (“CV”), attached as Appendix A, at II.A.52, 54, 56, 58-59, and 61; Appdx. A
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`at II.B.82-87; and Appdx. A at II.C.29, and 31-33).
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`17. An important component of my research from the very beginning has
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`been investigating the challenges of communicating multimedia content between
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`computers and across networks. Although the early Internet was used mostly for
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`text-based non-real time applications, the interest in sharing multimedia content
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`quickly developed. Multimedia-based applications ranged from downloading
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`content to a device to streaming multimedia content to be instantly used. One of
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`the challenges was that multimedia content is typically larger than text-only
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`content, but there are also opportunities to use different delivery techniques since
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`multimedia content is more resilient to errors. I have worked on a variety of
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`research problems and used a number of systems that were developed to deliver
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`multimedia content to users (see, e.g., Appdx. A at II.A.36, 52, 54, 56, 58-59, and
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`61; Appdx. A at II.B.30, 64-66, and 82-87; and Appdx. A at II.C.29, and 31-33).
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`18.
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`In 1994, I began to research issues associated with the development
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`and deployment of a one-to-many communication facility (called “multicast”) in
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`the Internet (first deployed as the Multicast Backbone, a virtual overlay network
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`supporting one-to-many communication). Some of my more recent research
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`endeavors have looked at how to use the scalability offered by multicast to provide
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`streaming media support for complex applications like distance learning,
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`distributed collaboration, distributed games, and large-scale wireless
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`communication. Multicast has also been used as the delivery mechanism in
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`systems that perform local filtering i.e., sending the same content to a large number
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`of users and allowing them to filter locally content in which they are not interested
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`(see, e.g., Appdx. A at II.A.29, 33-35, 38-41, 47-48, 50, 53, 55-57, and 60-61;
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`Appdx. A at II.B.4, 9, 59, 63, 70, 72, and 74-80; and Appdx. A at II.C.15, 17, 19-
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`20, and 23-29).
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`19. Starting in 1997, I worked on a project to integrate the streaming
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`media capabilities of the Internet together with the interactivity of the web. I
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`developed a project called the Interactive Multimedia Jukebox (IMJ). Users would
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`visit a web page and select content to view. The content would then be scheduled
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`on one of a number of logical content streams. Content was delivered using
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`multicast communication. The capacity of the system varied depending on the
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`capabilities of the server including the available bandwidth of its connection to the
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`Internet. If idle capacity existed when a request was made, the requesting user
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`would be able to watch its selection immediately. If the server was fully utilized in
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`streaming previously selected content, the user’s selection would be queued. In the
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`meantime, the user would see what content was already playing, and because of the
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`use of multicast, would be able to join one of the existing streams and watch the
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`content at the point it was currently being transmitted. This service combined the
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`interactivity of the web with the streaming capabilities of the Internet to create a
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`jukebox-like service. It supported true Video-on-Demand when capacity allowed,
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`but scaled to any number of users based on queuing requested programs. As part
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`of the project, we obtained permission from Turner Broadcasting to transmit
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`cartoons and other short-subject content. We also attempted to connect the IMJ
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`into the Georgia Tech campus cable television network so that students in their
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`dorms could use the web to request content and then view that content on one of
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`the campus’s public access TV channels (see, e.g., Appdx. A at II.A.59 and
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`II.B.82).
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`20. More recently, I have also studied issues concerning how users choose
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`content, especially when considering the price of that content. My research has
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`examined how dynamic content pricing can be used to control system load. By
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`raising prices when systems start to become overloaded (i.e., when all available
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`resources are fully utilized) and reducing prices when system capacity is readily
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`available, users’ capacity to pay as well as their willingness can be used as factors
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`in stabilizing the response time of a system. This capability is particularly useful in
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`systems where content is downloaded or streamed to users on-demand (see, e.g.,
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`Appdx. A at II.A.46, 49, and 51; Appdx. A at II.B.67-68, 71, and 73; and Appdx.
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`A at II.C.21).
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`21. As a parallel research theme, starting in 1997, I began researching
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`issues related to wireless devices. In particular, I was interested in showing how to
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`provide greater communication capability to “lightweight devices,” i.e., small
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`form-factor, resource-constrained (e.g., CPU, memory, networking, and power)
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`devices. Starting in 1998, I published several papers on my work to develop a
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`flexible, lightweight, battery-aware network protocol stack (see, e.g., Appdx. A at
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`II.B.81 and II.D.7). From this initial work, I have made wireless networking and
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`wireless devices one of the major themes of my research. One topic includes
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`developing applications for mobile devices, for example, virally exchanging and
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`tracking “coupons” through “opportunistic contact” (i.e., communication with
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`other devices that a user comes into communication range of) (see, e.g., Appdx. A
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`at II.A.23; Appdx. A at II.B.47 and 51). Other topics include building network
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`communication among a set of mobile devices unaided by any other kind of
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`network infrastructure. Yet another theme is monitoring wireless networks, in
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`particular different variants of IEEE 802.11 compliant networks, to (1) understand
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`the operation of the various protocols used in real-world deployments (see, e.g.,
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`Appdx. A at II.A.6 and 8; Appdx. A at II.B.2-, 23, 43, and 50; Appdx. A at II.C.4,
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`6, 13-14, 16, and 18), (2) use these measurements to characterize use of the
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`networks and identify protocol limitations and weaknesses (see, e.g., Appdx. A at
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`II.A.19 and 37; Appdx. A at II.B.15, 21, 22, 24, and 45; Appdx. A at II.C.1 and 7),
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`and (3) propose and evaluate solutions to these problems (see, e.g., Appdx. A at
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`II.A.1, 10-11, 16, 31, and 33; Appdx. A at II.B.1-2, 6, 19, 29, 33 and 56).
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`22. As an important component of my research program, I have been
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`involved in the development of academic research into available technology in the
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`marketplace. One aspect of this work is my involvement in the Internet
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`Engineering Task Force (IETF) including many content delivery-related working
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`groups like the Audio Video Transport (AVT) group, the MBone Deployment
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`(MBONED) group, Source Specific Multicast (SSM) group, the Inter- Domain
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`Multicast Routing (IDMR) group, the Reliable Multicast Transport (RMT) group,
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`the Protocol Independent Multicast (PIM) group, etc. I have also served as a
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`member of the Multicast Directorate (MADDOGS), which oversaw the
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`standardization of all things related to multicast in the IETF. Finally, I was the
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`Chair of the Internet2 Multicast Working Group for seven years.
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`23.
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`I am an author or co-author of nearly 200 technical papers, published
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`software systems, IETF Internet Drafts, and IETF Request for Comments (RFCs).
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`The titles and subject matter of these technical papers are listed in full on my CV,
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`attached as Appendix A.
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`24. My involvement in the research community extends to leadership
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`positions for several academic journals and conferences. I am the co-chair of the
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`Steering Committee for the ACM Network and System Support for Digital Audio
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`and Video (NOSSDAV) workshop and on the Steering Committees for the
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`International Conference on Network Protocols (ICNP), ACM Sigcomm
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`Workshop on Challenged Networks (CHANTS), and IEEE Global Internet (GI)
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`Symposium. I have served or am serving on the Editorial Boards of IEEE/ACM
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`Transactions on Networking, IEEE Transactions on Mobile Computing, IEEE
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`Network, ACM Computers in Entertainment, AACE Journal of Interactive
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`Learning Research (JILR), and ACM Computer Communications Review. I have
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`co-chaired a number of conferences and workshops including the IEEE
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`International Conference on Network Protocols (ICNP), IEEE Conference on
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`Sensor, Mesh and Ad Hoc Communications and Networks (SECON), International
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`Conference on Communication Systems and Networks (COMSNETS), IFIP/IEEE
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`International Conference on Management of Multimedia Networks and Services
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`(MMNS), the International Workshop On Wireless Network Measurement
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`(WiNMee), ACM Sigcomm Workshop on Challenged Networks (CHANTS), the
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`Network Group Communication (NGC) workshop, and the Global Internet
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`Symposium; and I have served on the program committees for numerous
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`conferences.
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`25. Furthermore, in the courses I teach at UCSB, a significant portion of
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`my curriculum covers aspects of the Internet and network communication
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`including the physical and data link layers of the Open System Interconnect (OSI)
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`protocol stack, including standardized protocols for communicating across a
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`variety of physical media including cable systems, telephone lines, wireless, and
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`high-speed Local Area Networks (LANs). The courses I have taught also cover
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`most major topics in Internet communication, including data communication,
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`multimedia encoding, and (mobile) application design. For a complete list of
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`courses I have taught, see my curriculum vitae, attached as Appendix A to this
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`declaration.
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`26.
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`In addition, I co-founded a technology company called Santa Barbara
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`Labs that was working under a sub-contract from the U.S. Air Force to develop
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`very accurate emulation systems for the military’s next generation internetwork.
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`Santa Barbara Labs’ focus was in developing an emulation platform to test the
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`performance characteristics of the network architecture in the variety of
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`environments in which it was expected to operate, and in particular, for network
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`services including IPv6, multicast, Quality of Service (QoS), satellite-based
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`communication, and security. Applications for this emulation program included
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`communication of a variety of multimedia-based services.
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`27.
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`I am a Member of the Association of Computing Machinery (ACM)
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`and a Senior Member of the Institute of Electrical and Electronics Engineers
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`(IEEE).
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`28. Additional details about my employment history, fields of expertise,
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`and publications are further included in my curriculum vitae attached as Appendix
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`A to this declaration.
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`Previous Expert Witness Experience
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`B.
`29. The following is a list of cases in which I have testified at trial,
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`hearing, or by deposition within the preceding four years. In the below listed
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`cases, I have represented both patent owners as well as accused infringers.
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`• A deposition in Re: Rembrandt Technologies, LP Patent Litigation
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`(MDL Docket No. 07-MD-1848, D. Del.);
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`• A deposition in Individual Networks, LLC v. Apple, Inc. (2:07-CV-
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`158-LED, E.D. Tex.);
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`• A deposition in Network Appliances, Inc. v. Sun Microsystems, Inc.
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`(C-07-06053 EDL, N.D. Cal.);
`
`• A deposition in Zamora Radio, LLC v. Last.FM LTD et al. (09-CIV-
`
`20940-TORRES, S.D. Fl);
`
`• Two depositions in Beneficial Innovations, Inc. v. Blockdot, Inc. et al.
`
`(2:07-CV-263(TJW/CE) and 2:07-CV-555 (TJW/CE), E.D. Tex.);
`
`• Two depositions and trial testimony in Personal Audio, LLC v. Apple,
`
`Inc. (9:09-CV-00111-RC, E.D. Tex.);
`
`16
`
`
`Samsung Ex. 1005
`
`
`
`Almeroth Declaration Concerning Claims 58 and 63 of U.S. Patent No. 8,135,398
`
`
`
`• Two depositions in Paltalk Holdings, Inc. v. Sony et al. (2:09-cv-274-
`
`DF-CE, E.D. Tex.);
`
`• A deposition and trial testimony in Certain Wireless Communication
`
`Devices, Portable Music and Data Processing Devices, Computers
`
`and Components (US ITC Inv. No. 337-TA-745);
`
`• Two depositions in Intermec Technologies Corp. v. Palm Inc. (07-
`
`272-SLR, D. Del.);
`
`• A deposition in iHance, Inc. v. Eloqua Corp. (2:11-CV-257-MSD-
`
`TEM, E.D. Va.);
`
`• A deposition and trial testimony in Two-Way Media LLC v. AT&T
`
`Inc., et al. (SA-09-CA-476-OG, W.D. Tex.);
`
`• A deposition in Apple, Inc. v. Motorola Mobility, Inc. (11-CV-178
`
`(BBC), W.D. Wis.); and
`
`• A deposition in British Telecommunications PLC v. CoxCom, Inc.,
`
`Cox Communications, Inc., & Cable One, Inc. (10-658-SLR, D. Del.).
`
`C. Compensation
`I am being compensated for services provided in this matter at my
`30.
`
`usual and customary rate of $500 per hour plus travel expenses. My compensation
`
`is not conditioned on the conclusions I reach as a result of my analysis or on the
`
`17
`
`
`Samsung Ex. 1005
`
`
`
`Almeroth Declaration Concerning Claims 58 and 63 of U.S. Patent No. 8,135,398
`
`
`outcome of this matter. Similarly, my compensation is not dependent upon and in
`
`now affects the substance of my statements in this declaration.
`
`31.
`
`I have no financial interest in Petitioner Samsung Electronics Co.,
`
`Ltd. Nor do I have any financial interest in Samsung Electronics America, Inc.,
`
`and Samsung Telecommunications America, LLC. I also do not have any financial
`
`interest in Patent Owner Virginia Innovation Sciences, Inc. I do not have any
`
`financial interest in the ‘398 patent and have not had any contact with any of the
`
`named inventors of the ‘398 patent (Tiehong Wang, Ning Wang, Ximing Wang,
`
`Tiejun Wang, William E. Halal).
`
`IV. MATERIALS CONSIDERED
`32. The materials I have considered in connection with this declaration
`
`are identified in Appendix B.
`
`V. LEGAL STANDARDS
`I am not an attorney and have not been asked to offer my opinion on
`33.
`
`the law. However, as an expert offering an opinion on whether the claims in the
`
`‘398 patent are patentable, I understand that I am obliged to follow existing law. I
`
`understand the following legal principles apply to analysis of patentability pursuant
`
`to 35 U.S.C. §§ 102 and 103.3
`
`
`3 I understand that Congress instituted certain changes to U.S. patent law in the
`
`American Invents Act, Pub.L. No. 112–29, 125 Stat. 284 (2011) (“AIA”) but that
`
`18
`
`
`Samsung Ex. 1005
`
`
`
`Almeroth Declaration Concerning Claims 58 and 63 of U.S. Patent No. 8,135,398
`
`
`
`34.
`
`I also understand that, in an inter partes review proceeding, patent
`
`claims may be deemed unpatentable if it is shown that they were anticipated and/or
`
`rendered obvious by one or more prior art patents or publications.
`
`A. Anticipation
`35. For a claim to be anticipated under § 102, every limitation of the
`
`claimed invention must be found in a single prior art reference, either expressly or
`
`inherently.
`
`36. A claim element is inherently present in a prior art reference if the
`
`element must necessarily be present and one of ordinary skill in the art would
`
`recognize that the element must necessarily be present. However, I understand that
`
`inherent anticipation does not require that a person of ordinary skill in the art at the
`
`time would have recognized the inherent disclosure.
`
`37. A claim is unpatentable as anticipated under § 102(a) if the claimed
`
`invention was “known or used by others in this country, or patented or described in
`
`a printed publication in this or another country, before the invention thereof by the
`
`applicant for patent.”
`
`38. A claim is unpatentable as anticipated under § 102(b) if the claimed
`
`invention was “patented or described in a printed publication in this or a foreign
`
`the ‘398 patent is governed by statutes as enacted prior to the AIA. Therefore,
`
`references in my declaration are to the pre-AIA statutes.
`
`19
`
`
`Samsung Ex. 1005
`
`
`
`Almeroth Declaration Concerning Claims 58 and 63 of U.S. Patent No. 8,135,398
`
`
`country or in public use or on sale in this country, more than one year prior to the
`
`date of the application for patent in the United States.”
`
`39. A claim is unpatentable as anticipated under § 102(e) if “the invention
`
`was described in (1) an application for patent, published under section 122(b), by
`
`another filed in the United States before the invention by the applicant for patent or
`
`(2) a patent granted on an application for patent by another filed in the United
`
`States before the invention by the applicant for patent, except that an international
`
`application filed under the treaty defined in section 351(a) shall have the effects for
`
`the purposes of this subsection of an application filed in the United States only if
`
`the international application designated the United States and was published under
`
`Article 21(2) of such treaty in the English language.”
`
`B. Obviousness
`I understand that under 35 U.S.C. § 103, “[a] patent for a claimed
`40.
`
`invention may not be obtained, notwithstanding that the claimed invention is not
`
`identically disclosed as set forth in section 102, if the differences between the
`
`claimed invention and the prior art are such that the claimed invention as a whole
`
`would have been obvious before the effective filing date of the claimed invention
`
`to a person having ordinary skill in the art to which the claimed invention
`
`pertains.” When considering the issues of obviousness, I understand that I am to
`
`do the following:
`
`20
`
`
`Samsung Ex. 1005
`
`
`
`Almeroth Declaration Concerning Claims 58 and 63 of U.S. Patent No. 8,135,398
`
`
`
`a.
`
`b.
`
`c.
`
`d.
`
`Determine the scope and content of the prior art;
`
`Ascertain the differences between the prior art and the claims at
`
`issue;
`
`Resolve the level of ordinary skill in the pertinent art; and
`
`Consider evidence of secondary indicia of non-obviousness (if
`
`available).
`
`41. Obviousness is a determination of law based on underlying
`
`determinations of fact. These factual determinations include the scope and content
`
`of the prior art, the level of ordinary skill in the art, the differences between the
`
`claimed invention and the prior art, and secondary considerations of
`
`non-obviousness.
`
`42. With respect to secondary indicia of non-obviousness, I have been
`
`informed that such evidence may include the following:
`
`a. Commercial success: It is my understanding that a strong showing of
`
`commercial success that can be attributed to the merits of the
`
`invention should be considered an indication of non-obviousness.
`
`b. Copying: It is my understanding that evidence that an accused party
`
`copied the patented invention, as opposed to a prior art device, is an
`
`indication of non-obviousness.
`
`21
`
`
`Samsung Ex. 1005
`
`
`
`Almeroth Declaration Concerning Claims 58 and 63 of U.S. Patent No. 8,135,398
`
`
`
`c. Long-standing problem or need: It is my understanding that evidence
`
`of a persistent problem or need in the art that was resolved by the
`
`patented invention is an indication of non-obviousness.
`
`d. Prior failure: It is my understanding that evidence that others have
`
`tried and failed to solve the problem or provide the need resolved by
`
`the claimed invention is an indication of non-obviousness.
`
`e. Commercial acquiescence of competitors: It is my understanding that
`
`the willingness of industry to license the patent at issue is an
`
`indication of non-obviousness, though consideration must be given to
`
`distinguishing respect for the invention from a desire to avoid
`
`litigation.
`
`f. Skepticism: It is my understanding that evidence that those of
`
`ordinary skill were skeptical as to the merits of the invention, or even
`
`taught away from the invention, are indications of non-obviousness.
`
`g. Independent development: It is my understanding that evidence that
`
`others developed the claimed invention about the same time is an
`
`indication of obviousness. In contrast, their failure to do so, it
`
`follows, would be an indication of non-obviousness.
`
`h. Prior litigation: It is my understanding t
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