UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`BLACKBERRY CORP.,
`Petitioner,
`
`v.
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner.
`
`__________________
`
`DECLARATION OF ANDREW WOLFE PH.D.
`in Support of Petition for Inter Partes Review of
`U.S. Patent No. 6,012,103
`
`Mail Stop PATENT BOARD Patent Trial and
`Appeal Board U.S. Patent and Trademark
`Office P.O. Box 1450
`Alexandria, VA 22313-1450
`
`BLACKBERRY Ex. 1012, page 1
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`

`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................... 4 
`I. 
`II.  QUALIFICATIONS ............................................................................................ 4 
`III.  MATERIALS CONSIDERED AND PREPARED .................................... 10 
`IV. 
`SUMMARY OF OPINIONS ...................................................................... 11 
`I.  LEGAL PRINCIPLES USED IN ANALYSIS ................................................. 13 
`A.  Patent Claims in General ............................................................................. 13 
`B.  Prior Art ....................................................................................................... 16 
`C.  Unpatentability – Anticipation .................................................................... 17 
`D.  Unpatentability -- Obviousness ................................................................... 18 
`VI.   BACKGROUND OF THE PATENT AND RELEVANT TECHNOLOGY
`
`20 
`VII.   THE ’103 PATENT .................................................................................... 24 
`VIII.  CLAIM CONSTRUCTION ........................................................................ 30 
`IX.   OVERVIEW OF THE PRIOR ART ........................................................... 33 
`A.  Patent Owner’s Admitted Prior Art (“APA”) ............................................. 33 
`B.  U.S. Patent No. 6,073,193 to Yap (“Yap”) ................................................. 38 
`C.  U.S. Patent No. 5,628,028 to Michelson (“Michelson”) ............................. 43 
`D.  PCCextend 100 User’s Manual (“PCCextend”) ......................................... 45 
`E.  U.S. Patent No. 5,862,393 to Davis (“Davis”) ............................................ 48 
`UNPATENTABILITY ANALYSIS ........................................................... 53 
`X.  
`A.  The Claims of the ’103 Patent ..................................................................... 53 
`B.  Claim 14 of the ’103 Patent Is Anticipated Under 35 U.S.C. § 102(b) by
`the USB Specification V1.0. ............................................................................. 55 
`C.  Claims 14, 18-20, and 23-27 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over the APA in view of Yap ..................................................... 70 
`1. 
`Independent Claim 14 ......................................................................... 70 
`2.  Dependent Claim 18 ............................................................................ 79 
`3.  Dependent Claim 19 ............................................................................ 80 
`
`ii
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`BLACKBERRY Ex. 1012, page 2
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`4.  Dependent Claim 20 ............................................................................ 82 
`5.  Dependent Claim 23 ............................................................................ 83 
`6. 
`Independent Claim 24 ......................................................................... 85 
`7.  Dependent Claim 25 ............................................................................ 90 
`8.  Dependent Claim 26 ............................................................................ 91 
`9.  Dependent Claim 27 ............................................................................ 92 
`C.  Claims 15 and 16 are unpatentable under 35 U.S.C. § 103(a) as being
`obvious over APA in view of Yap, further in view of Michelson ...................... 93 
`1.  Dependent Claim 15 ............................................................................ 93 
`2.  Dependent Claim 16 ............................................................................ 96 
`D.  Claims 14-16, 18, and 23-26 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over Michelson in view of PCCextend and Davis ...................... 97 
`1. 
`Independent Claim 14 ......................................................................... 97 
`2.  Dependent Claim 15 ..........................................................................105 
`3.  Dependent Claim 16 ..........................................................................106 
`4.  Dependent Claim 18 ..........................................................................106 
`5.  Dependent Claim 23 ..........................................................................107 
`6. 
`Independent Claim 24 .......................................................................109 
`7.  Dependent Claim 25 ..........................................................................114 
`8.  Dependent Claim 26 ..........................................................................115 
`E.  Claims 19, 20, and 27 are unpatentable under 35 U.S.C. § 103(a) as being
`obvious over Michelson in view of PCCextend 100 User’s Manual and Davis,
`further in view of the Admitted Prior Art ........................................................115 
`1.  Dependent Claim 19 ..........................................................................115 
`2.  Dependent Claim 20 ..........................................................................118 
`3.  Dependent Claim 27 ..........................................................................120 
`CONCLUDING STATEMENTS .............................................................121 
`
`
`iii
`
`XI. 
`
`
`
`
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`BLACKBERRY Ex. 1012, page 3
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`

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`I, Andrew Wolfe, hereby declare as follows:
`I.
`INTRODUCTION
`1.
`
`I am currently a consultant at Wolfe Consulting.
`
`2.
`
`I have been retained in this matter to provide various opinions
`
`regarding U.S. Patent No. 6,012,103 (the “’103 patent”). I am being compensated
`
`for my work in this matter at my ordinary hourly consulting rate. My
`
`compensation in no way depends upon the outcome of this proceeding.
`
`3.
`
`I have been advised that Cypress Semiconductor Corp. owns the ’103
`
`Patent. I have no financial interest in the ’103 patent.
`
`II. QUALIFICATIONS
`4.
`
`I have more than 30 years of experience as a computer architect,
`
`computer system designer, personal computer graphics designer, educator, and as
`
`an executive in the electronics industry.
`
`5.
`
`In 1985, I earned a B.S.E.E. degree in Electrical Engineering and
`
`Computer Science from The Johns Hopkins University. In 1987, I received an
`
`M.S. degree in Electrical and Computer Engineering from Carnegie Mellon
`
`University. In 1992, I received a Ph.D. in Computer Engineering from
`
`Carnegie Mellon University. My doctoral dissertation proposed a new
`
`approach for the architecture of a computer processor.
`
`6.
`
`In 1983, I began designing touch sensors, microprocessor-based
`
`computer systems, and I/O (input/output) cards for personal computers as a
`
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`BLACKBERRY Ex. 1012, page 4
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`senior design engineer for Touch Technology, Inc. During the course of my
`
`design projects with Touch technology, I designed I/O cards for PC-compatible
`
`computer systems, including the IBM PC-AT, to interface with interactive
`
`touch-based computer terminals that I designed for use in public information
`
`systems. I continued designing and developing related technology as a
`
`consultant to the Carroll Touch division of AMP, Inc., where in 1986 I designed
`
`one of the first custom touchscreen integrated circuits.
`
`7.
`
`From 1986 through 1987, I designed and built a high-performance
`
`computer system as a student at Carnegie Mellon University. From 1986
`
`through early 1988, I also developed the curriculum, and supervised the teaching
`
`laboratory, for processor design courses.
`
`8.
`
`In the latter part of 1989, I worked as a senior design engineer for
`
`ESL-TRW Advanced Technology Division. While at ESL-TRW, I designed and
`
`built a bus interface and memory controller for a workstation-based computer
`
`system, and also worked on the design of a multiprocessor system.
`
`9.
`
`At the end of 1989, I (along with some partners) reacquired the
`
`rights to the technology I had developed at Touch Technology and at AMP, and
`
`founded The Graphics Technology Company. Over the next seven years, as an
`
`officer and a consultant for The Graphics Technology Company, I managed the
`
`company's engineering development activities and personally developed dozens
`
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`BLACKBERRY Ex. 1012, page 5
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`of touchscreen sensors, controllers, and interactive touch-based computer
`
`systems.
`
`10.
`
`I have consulted, formally and informally, for a number of fabless
`
`semiconductor companies. In particular, I have served on the technical
`
`advisory boards for two processor design companies: BOPS, Inc., where I
`
`chaired the board, and Siroyan Ltd., where I served in a similar role for three
`
`networking chip companies—Intellon, Inc., Comsilica, Inc, and Entridia,
`
`Inc.—and one 3D game accelerator company, Ageia, Inc.
`
`11.
`
`I have also served as a technology advisor to Motorola and to
`
`several venture capital funds in the U.S. and Europe. Currently, I am a director
`
`of Turtle Beach Corporation, providing guidance in its development of premium
`
`audio peripheral devices for a variety of commercial electronic products.
`
`12.
`
`From 1991 through 1997, I served on the Faculty of Princeton
`
`University as an Assistant Professor of Electrical Engineering. At Princeton, I
`
`taught undergraduate and graduate-level courses in Computer Architecture,
`
`Advanced Computer Architecture, Display Technology, and Microprocessor
`
`Systems, and conducted sponsored research in the area of computer systems and
`
`related topics. I was also a principal investigator for DOD research in video
`
`technology and a principal investigator for the New Jersey Center for Multimedia
`
`Research. From 1999 through 2002, I taught the Computer Architecture course
`
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`BLACKBERRY Ex. 1012, page 6
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`to both undergraduate and graduate students at Stanford University multiple
`
`times as a Consulting Professor. At Princeton, I received several teaching
`
`awards, both from students and from the School of Engineering. I have also
`
`taught advanced microprocessor architecture to industry professionals in IEEE
`
`and ACM sponsored seminars. I am currently a lecturer at Santa Clara
`
`University teaching graduate courses on Computer Organization and
`
`Architecture and undergraduate courses on electronics and embedded computing.
`
`13.
`
`From 1997 through 2002, I held a variety of executive positions at a
`
`publicly-held fabless semiconductor company originally called S3, Inc. and later
`
`called Sonicblue Inc. For example, I held the positions of Chief Technology
`
`Officer, Vice President of Systems Integration Products, Senior Vice President of
`
`Business Development, and Director of Technology. At the time I joined S3,
`
`the company supplied graphics accelerators for more than 50% of the PCs sold in
`
`the United States.
`
`14. Beginning in 1998, I began to work closely with S3’s largest
`
`customer, Diamond Multimedia, to explore possible opportunities for a merger.
`
`My investigation included evaluating the technology, market, and business
`
`model related to the “Diamond Rio PMP300,” the first commercially viable
`
`flash-memory MP3 player. In 1999, I led the merger negotiations between the
`
`two companies, managed significant parts of company integration, and, after the
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`BLACKBERRY Ex. 1012, page 7
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`merger was complete, worked on new product development. Soon after the
`
`merger with Diamond, we introduced the “Diamond Rio PMP500,” a portable
`
`music player that included Universal Serial Bus (“USB”) capability and also the
`
`ability to play downloaded files purchased from the Audible.com website. We
`
`also developed relationships with MP3 music vendors, including eMusic and
`
`MP3.com.
`
`15. While at Diamond, we also developed the Rio 600 and 800 MP3
`
`players, which included support for digital rights management (“DRM”)
`
`protected music using protocols from Microsoft. During the development of
`
`the PMP500 and the Rio 600, we also developed a music delivery platform and
`
`webstore backend service for selling DRM-protected music. In 1999, this
`
`business segment was spun out as a separate company called RioPort.com. I
`
`served on the RioPort.com board of directors and became involved in their
`
`product and technology strategy. I also managed engineering and marketing
`
`for the Rio product line for a period of time as an interim general manager.
`
`16.
`
`I served as a board member and technical advisor at KBGear Inc.
`
`from 1999-2001. KBGear Inc. designed and produced digital cameras and
`
`music players that included USB ports and flash memory.
`
`17.
`
`I have published more than 50 peer-reviewed papers in computer
`
`architecture and computer systems and IC design.
`
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`BLACKBERRY Ex. 1012, page 8
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`18.
`
`I also have chaired IEEE and ACM conferences in microarchitecture
`
`and integrated circuit design and served as an associate editor for IEEE and
`
`ACM journals.
`
`19.
`
`20.
`
`I am a named inventor on 36 U.S. patents and 24 foreign patents.
`
`In 2002, I was the invited keynote speaker at the ACM/IEEE
`
`International Symposium on Microarchitecture and at the International
`
`Conference on Multimedia. From 1990 through 2005, I have also been an
`
`invited speaker on various aspects of technology and the PC industry at
`
`numerous industry events including the Intel Developer’s Forum, Microsoft
`
`Windows Hardware Engineering Conference, Microprocessor Forum, Embedded
`
`Systems Conference, Comdex, and Consumer Electronics Show, as well as at the
`
`Harvard Business School and the University of Illinois Law School. I have
`
`been interviewed on subjects related to computer graphics and video technology
`
`and the electronics industry by publications such as the Wall Street Journal, New
`
`York Times, Los Angeles Times, Time, Newsweek, Forbes, and Fortune as well
`
`as CNN, NPR, and the BBC. I have also spoken at dozens of universities
`
`including MIT, Stanford, University of Texas, Carnegie Mellon, UCLA,
`
`University of Michigan, Rice, and Duke.
`
`21. Based on my technical education, and my years of professional
`
`experience as both an engineer and as an educator, I consider myself to be an
`
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`BLACKBERRY Ex. 1012, page 9
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`expert in the field of computer architecture and computer system design,
`
`consumer electronics, and computer programming, including computer busses,
`
`interfaces, and input/output ports. Moreover, I am very familiar with the
`
`operation and functional capabilities and limitations of commercial computers
`
`and computer peripherals existing during the late 1990s.
`
`22. My professional experience with computer peripheral device
`
`interface design and with USB technology, as well as my educational background,
`
`is summarized in more detail in my C.V., which is attached as Exhibit 1021.
`
`III. MATERIALS CONSIDERED AND PREPARED
`23.
`
`In forming the opinions expressed below, I considered the ’103
`
`patent and the other patents in its family (U.S. Patent Nos. 6,249,825 and
`
`6,493,770) (collectively the “USB Patents”) and their file histories as well as the
`
`prior art references and related documentation discussed herein. I have also relied
`
`upon my education, background, and experience.
`
`24.
`
`In addition, I have reviewed the declaration of Geert Knapen that was
`
`presented with respect to a prior IPR petition related to the ’103 patent. In most
`
`cases, I found the presentation of pertinent facts and the accompanying analysis in
`
`that declaration to be both accurate and well written. Furthermore, in many cases,
`
`my relevant opinions are identical to Mr. Knapen’s. In these cases, I have
`
`duplicated Mr. Knapen’s language in this declaration to simplify the presentation
`
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`BLACKBERRY Ex. 1012, page 10
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`to the PTAB. Where my opinions differ from Mr. Knapen’s or I felt that a
`
`different form of presentation is preferable, I have written new text.
`
`IV. SUMMARY OF OPINIONS
`25. Based on my investigation and analysis, and for the reasons set forth
`
`below, it is my opinion that all of the elements and steps recited in claims 14-16,
`
`18-20, and 23-27 of the ’103 patent are disclosed in prior art references and that
`
`those claims are rendered unpatentable for obviousness in view of these references.
`
`In particular, I have relied primarily on the six prior art references identified
`
`below in support of my opinions:
`
`(1) Patent Owner’s Admitted Prior Art (“APA”) (Ex. 1001);
`
`(2) U.S. Patent No. 6,073,193 to Yap (“Yap”) (Ex. 1002);
`
`(3) U.S. Patent No. 5,628,928 to Michelson (“Michelson”) (Ex. 1003);
`
`(4) PCCextend1 00 User’s Manual (“PCCextend”) (Ex. 1004);
`
`(5) U.S. Patent No. 5,862,393 to Davis (“Davis”) (Ex. 1005);
`
`(6) Universal Serial Bus Specification v1.0, January 15,
`
`1996, Copyright 1996, Compaq Computer Corporation, Digital
`
`Equipment Corporation,IBM PC Company, Intel Corporation,
`
`Microsoft Corporation, NEC, Northern Telecom (“USB1.0
`
`Specification”) (Ex. 1013);
`
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`BLACKBERRY Ex. 1012, page 11
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`26.
`
`In addition to the documents above, I have also considered the
`
`following references in preparing this declaration.
`
`(1) Prosecution History of U.S. Patent 6,012,103 (Ex. 1006);
`
`(2) Prosecution History of U.S. Patent 6,249,825 (Ex. 1007);
`
`(3) Prosecution History of U.S. Patent 6,493,770 (Ex. 1008);
`
`(4) U.S. Patent No. 5,590,273 to Balbinot (Ex. 1014)
`
`(5) U.S. Patent No. 6,338,109 to Snyder (Ex. 1015)
`
`(6) Quinnell, Richard A., “USB: A Neat Package with a Few Loose Ends,”
`
`EDN Magazine (October 24, 1996) (Ex. 1016)
`
`(7) Levine, Larry. PCMCIA Primer, pp. 117-130 (M&T Books 1995)(Ex.
`
`1017).
`
`(8) PCMCIA PC Standard Release 2.01, pp. 3-2 to 3-5; 4-2 to 4-7; 4-10 to
`
`4-19; 4-28 to 4-31; 4-34 to 4-37; 5-2 to 5-5; 5-12 to 5-21; 5-23; 5-48 to 5-51; 6-6
`
`to 6-17 (Ex. 1018)
`
`(9) PCMCIA Card Services Specification Release 2.0, pp. 3-2 to 3-7; 3- 14 to
`
`3-17; 3-20 to 3-25; 3-28 to 3-29; 5-78 to 5-79 (Ex. 1019)
`
`(10) U.S. Patent No. 5,537,654 to Bedingfield (Ex. 1020)
`
`27.
`
`The bases for my opinions are set forth in greater detail below and in
`
`the claim charts attached as Appendix A.
`
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`BLACKBERRY Ex. 1012, page 12
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`

`
`I.
`
`LEGAL PRINCIPLES USED IN ANALYSIS
`28.
`
`I am not a patent attorney and I am presenting no opinions on the law
`
`related to patent validity. Blackberry’s attorneys have explained certain legal
`
`principles to me that I have relied on in forming my opinions set forth in this
`
`declaration.
`
`29.
`
`I was informed that my assessment and determination of whether or
`
`not claims 14-16, 18-20, and 23-27 of the ’103 patent are unpatentable must be
`
`undertaken from the perspective of what would have been known or understood by
`
`someone of ordinary skill in the art as of the earliest priority filing date of the USB
`
`Patents—July 2, 1997. From analyzing the USB Patents and the relevant prior art,
`
`it is my opinion that a person of ordinary skill in the relevant art for the ’103 patent
`
`(“PHOSITA”) would be sufficiently skilled in the design of peripheral devices used
`
`in connection with computer systems to understand and practice the prior art
`
`discussed in this declaration. Unless otherwise specified, when I state that
`
`something would be known to or understood by one skilled in the art or possessing
`
`ordinary skill in the art, I am referring to someone with this level of knowledge and
`
`understanding.
`
`A. Patent Claims in General
`30.
`
`I have been informed that patent claims are the numbered sentences at
`
`the end of each patent. I have been informed that the claims are important because
`
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`BLACKBERRY Ex. 1012, page 13
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`the words of the claims define what a patent covers. I have also been informed that
`
`the figures and text in the rest of the patent provide a description and/or examples
`
`and help explain the scope of the claims, but that the claims define the breadth of
`
`the patent’s coverage.
`
`31.
`
`I have also been informed that an “independent claim” expressly sets
`
`forth all of the elements that must be met in order for something to be covered by
`
`that claim. I have also been informed that a “dependent claim” does not itself
`
`recite all of the elements of the claim but refers to another claim for some of its
`
`elements. In this way, the claim “depends” on another claim and incorporates all
`
`of the elements of the claim(s) from which it depends. I also have been informed
`
`that dependent claims add additional elements. I have been informed that, to
`
`determine all the elements of a dependent claim, it is necessary to look at the
`
`recitations of the dependent claim and any other claim(s) on which it depends. I
`
`have also been informed that patent claims may be expressed as “methods” or
`
`“apparatuses/devices/systems.” That is, I have been informed that a patent may
`
`claim the steps of a “method,” such as a particular way to perform a process in a
`
`series of ordered steps, or may claim a combination of various elements in an
`
`“apparatus,” “device,” or “system.”
`
`32.
`
`I have also been informed that patent claims may be expressed as
`
`“means-plus-function” claims. I have been informed that a claim limitation is
`
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`BLACKBERRY Ex. 1012, page 14
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`presumed to be a means-plus-function limitation when it explicitly uses the term
`
`“means” and includes functional language. I have further been informed that a
`
`claim limitation expressed in means-plus-function language shall be construed to
`
`cover the corresponding structure described in the specification and equivalents
`
`thereof.
`
`33.
`
`I understand that some of the claim elements of the ’103 patent are
`
`written in so-called means-plus-function format. Those elements are governed
`
`by 35 U.S.C. § 112, ¶ 6, which states: “An element in a claim for a combination
`
`may be expressed as a means or step for performing a specified function without
`
`the recital of structure, material, or acts in support thereof, and such claim shall be
`
`construed to cover the corresponding structure, material, or acts described in the
`
`specification and equivalents thereof.”
`
`34.
`
`I understand that a disclosed structure is corresponding if the patent’s
`
`specification clearly links or associates that structure to the function recited in the
`
`claim.
`
`35.
`
`I understand that a prior art reference teaches a means-plus-function
`
`claim element recited in a patent when the prior art reference teaches (A)
`
`performing the identical function recited in the claim element (B) using a structure
`
`identical or equivalent to the structure described in the patent. Two structures are
`
`equivalent if a PHOSITA would consider the differences between them to be
`
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`BLACKBERRY Ex. 1012, page 15
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`
`insubstantial for performing the required function. One way to determine this is
`
`to look at whether or not the prior art structure performs the identical function in
`
`substantially the same way to achieve substantially the same result. Another way
`
`is to consider whether a PHOSITA believed that the prior art structure and the
`
`structure in the patent were interchangeable at the time the patent was issued.
`
`B.
`36.
`
`Prior Art
`
`I have been informed that the law provides categories of
`
`information
`
`(known as “prior art”) that may anticipate or render obvious patent claims. I have
`
`been informed that, to be prior art with respect to a particular patent in this
`
`proceeding, a reference must have been published, or patented, or be the subject
`
`of a patent application by another, before the priority date of the patent. I have
`
`also been informed that a person of ordinary skill in the art is presumed to have
`
`knowledge of all prior art. I have been asked to presume that the reference
`
`materials that I opine on, i.e., the APA; U.S. Patent No. 6,073,193 to Yap; U.S.
`
`Patent No. 5,628,028 to Michelson; PCCextend 100 User’s Manual; USB 1.0
`
`Specification, and U.S. Patent No. 5,862,393 to Davis, are prior art from a
`
`technical perspective – that is, all were available to a person of ordinary skill in
`
`the art on or before the priority date of the patent.
`
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`BLACKBERRY Ex. 1012, page 16
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`

`
`C. Unpatentability – Anticipation
`37.
`
`I have been informed and understand that determination of whether a
`
`patent claim is “anticipated” is a two-step process. First, the language of the claim
`
`is construed as it would be understood by one of ordinary skill in the art at the
`
`time of the filing of the patent application. Reference is made to the intrinsic
`
`evidence of record, which includes the language of the claim itself and other
`
`issued claims, the patent specification, and the prosecution history. Words in a
`
`claim will be given their ordinary or accustomed meaning unless it appears that
`
`the inventor used them differently. The prosecution history may limit the
`
`interpretation of the claim, especially if the applicant disavowed or disclaimed any
`
`coverage in order to obtain allowance of the claim.
`
`38.
`
`Second, I understand that after the patent claim has been construed,
`
`determining anticipation of the patent claim requires a comparison of the properly
`
`construed claim language to the prior art on an element-by-element basis.
`
`39.
`
`I understand that a claimed invention is “anticipated” if each and
`
`every element of the claim has been disclosed in a single prior art reference, or has
`
`been embodied in a single prior art device or practice, either explicitly or
`
`inherently (i.e., necessarily present or implied).
`
`40.
`
`I understand that although anticipation cannot be established by
`
`combining references, additional references may be used to interpret the
`
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`BLACKBERRY Ex. 1012, page 17
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`

`
`anticipating reference by, for example, indicating what the anticipating reference
`
`would have meant to one having ordinary skill in the art.
`
`41.
`
`I understand that certain asserted claim elements in the Asserted
`
`Patent have been written in means-plus-function format. I understand that
`
`anticipatory prior art must satisfy both the functional and—assuming it can be
`
`identified in the written description of the patent—the corresponding structural
`
`requirements of a given means-plus-function claim element (by having either the
`
`structure that the patent specification discloses or its equivalent).
`
`D. Unpatentability -- Obviousness
`42.
`
`I have been informed that, even if every element of a claim is not
`
`found explicitly or implicitly in a single prior art reference, the claim may still be
`
`unpatentable if the differences between the claimed elements and the prior art are
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`such that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person of ordinary skill in the art. That is, the invention
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`may be obvious to a person having ordinary skill in the art when seen in light of
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`one or more prior art references. I have been informed that a patent is obvious
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`when it is only a combination of old and known elements, with no change in their
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`respective functions, and that these familiar elements are combined according to
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`known methods to obtain predictable results. I have been informed that the
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`following four factors are considered when determining whether a patent claim is
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`BLACKBERRY Ex. 1012, page 18
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`obvious: (1) the scope and content of the prior art; (2) the differences between the
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`prior art and the claim; (3) the level of ordinary skill in the art; and (4) secondary
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`considerations tending to prove obviousness or nonobviousness. I have also been
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`informed that the courts have established a collection of secondary factors of
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`nonobviousness, which include: unexpected, surprising, or unusual results; prior
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`art that teaches away from the alleged invention; substantially superior results;
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`synergistic results; long-standing need; commercial success; and copying by
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`others. I have also been informed that there must be a connection, or nexus,
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`between these secondary factors and the scope of the claim language.
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`43.
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`I have also been informed that some examples of rationales that may
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`support a conclusion of obviousness include:
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`a) Combining prior art elements according to known methods to yield
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`predictable results;
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`b) Simply substituting one known element for another to obtain
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`predictable results;
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`c) Using known techniques to improve similar devices (or product) in
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`the same way (e.g. obvious design choices);
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`d) Applying a known technique to a known device (or product) ready
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`for improvement to yield predictable results;
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`BLACKBERRY Ex. 1012, page 19
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`e) Choosing from a finite number of identified, predictable solutions,
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`with a reasonable expectation of success—in other words, whether
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`something is “obvious to try”;
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`f) Using work in one field of endeavor to prompt variations of that
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`work for use in either the same field or a different one based on
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`design incentives or other market forces if the variations are
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`predictable to one of ordinary skill in the art; and
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`g) Arriving at a claimed invention as a result of some teaching,
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`suggestion, or motivation in the prior art that would have led one
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`of ordinary skill to modify the prior art reference or to combine
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`prior art reference teachings.
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`44.
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`I have also been informed that other rationales to support a
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`conclusion of obviousness may be relied upon, for instance, that common sense
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`(where substantiated) may be a reason to combine or modify prior art to achieve the
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`claimed invention.
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`VI. BACKGROUND OF THE PATENT AND RELEVANT
`TECHNOLOGY
`45.
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`The ’103 patent relates to a system and method for interfacing a
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`computer system to a peripheral device. A wide variety of peripheral devices were
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`common at the time of the ’103 filing, examples of which included a computer
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`mouse, keyboard, printer, network adapter, modem, data storage device, and
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`BLACKBERRY Ex. 1012, page 20
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`computer monitor. Often these peripherals, particularly a network adapter,
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`modem, or data storage device, were in the form of a PC card (also referred to as a
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`PCMCIA card). Various specifications have been developed to facilitate interaction
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`between a computer and a peripheral device. These specifications have included
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`the Personal Computer Memory Card International Association (PCMCIA)
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`Specification and the Universal Serial Bus (USB) Specification.
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`46.
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`In the Background of the Invention of the ’103 Patent
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`(“Background”), the patentee admits that it was known to connect a peripheral
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`device to a computer using a USB connection. Ex. 1001, 1:41-60; 4:7-21; Fig. 1.
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`The patentee also admits in the Background that, when the USB connector of a
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`peripheral is inserted into a powered-up host computer or inserted into a
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`powered-down host computer which is then powered up, the host computer detects
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`the peripheral device and a configuration process known as “enumeration” begins
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`which causes the peripheral device to be recognized by the host computer’s
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`operating system. Ex. 1001, 1:55-2:8.1
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`1 The USB 1.0 Specification actually explained that enumeration is an ongoing
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`activity for the bus and that it is only done at startup time for some busses. “4.6.3
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`Bus Enumeration Bus enumeration is the activity that identifies and addresses
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`devices attached to a bus. For many buses, this is done at startup time and the
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`information collected is static. Since the USB allows USB devices to attach to or
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`47.
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`The Background further alleges that the only opportunity for
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`associating a software device driver with a peripheral device is at the time when
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`the enumeration process occurs. Ex. 1001, 2:9-12. “Thus, to alter the
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`configuration or personality of a peripheral device, such as downloading new
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`code or configuration information into the memory of the peripheral device, the
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`host computer system must detect a peripheral device connection or a
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`disconnection and then a reconnection.” Id. at 2:13-17.
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`48.
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`This was admitted to be one of the “problems of known systems and
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`methods. . . .” Id. at 2:27. Accordingly, it was admitted to be known that a
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`peripheral device could have